Invalidity dossier
US 8736729
Electric Camera
Current assignee: LG Electronics USA Inc.
Added 9/28/2026, 5:24:29 PM
Active provider: DeepSeek · deepseek-v4-flash
Auto-generating section 1 of 3: Obviousness…
Each section takes ~30-60s with web-search grounding. Keep this tab open — sections will fill in below as they complete.
Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll search for authoritative information on this patent, including any 2026 CAFC activity.
Let me check specifically for any 2026 Federal Circuit activity and the reexamination.
Let me do a final targeted check for any 2026 Federal Circuit docket involving this patent or Maxell.
US 8,736,729 B2 — "Electric Camera"
Verification note: This is the patent bearing number 8,736,729 exactly (US 2013/0093933 A1 pre-grant publication). It is not the related but distinct U.S. 8,339,493, U.S. 8,059,177, U.S. 9,104,604, U.S. 9,544,517, U.S. 10,554,917, or U.S. 10,462,403, all of which are in the same family and were returned repeatedly in searches.
Bibliographic data (from the authoritative patent document)
| Field | Value |
|---|---|
| Title | Electric Camera |
| Patent number | US 8,736,729 B2 |
| Application no. | 13/681,495 |
| Filing date | 2012‑11‑20 |
| Issue/grant date | 2014‑05‑27 |
| Priority date | 2000‑01‑11 (JP 2000‑006064 / JP 3991543 B2) |
| Inventors | Takahiro Nakano; Ryuji Nishimura; Toshiro Kinugasa |
| Original assignee | Hitachi Consumer Electronics Co., Ltd. (application filed by Hitachi Consumer Electronics; earlier assignor Hitachi, Ltd.) |
| Current assignee (per Google Patents listing) | Maxell Ltd. — chain: Hitachi Consumer Electronics (2013‑06‑12) → Hitachi Maxell (2014‑09‑08) → Maxell (2018‑01‑25) → Maxell Holdings (2021‑11‑29, merger) → Maxell (2021‑12‑03, name change) |
| Claims | 4 (claims 1–2 apparatus, 3–4 method) |
| Classification | H04N 25/00 et al. (solid-state image sensor circuitry; camera control; motion/stabilization) |
| Status | Expired – Fee Related (Google lists anticipated expiration 2020‑03‑08) |
Family/linkage: A continuation of Ser. No. 12/845,266 (now U.S. 8,339,493), which was a continuation of Ser. No. 10/660,710 (now U.S. 8,059,177); related to Ser. No. 10/660,711 (U.S. 7,403,226); both of those are divisionals of Ser. No. 09/520,836 (U.S. 6,765,616). A terminal disclaimer was filed in sibling application 14/264,243 tying term to U.S. 6,765,616 and U.S. 7,403,226.
Abstract (verbatim)
"An electric camera includes an image sensing device with a light receiving surface having N vertically arranged pixels and an arbitrary number of pixels arranged horizontally, N being equal to or more than three times the number of effective scanning lines M of a display screen of a television system, a driver to drive the image sensing device to vertically mix or cull signal charges accumulated in individual pixels of K pixels to produce, during a vertical effective scanning period of the television system, a number of lines of output signals which corresponds to 1/K the number of vertically arranged pixels N of the image sensing device, K being an integer equal to or less than an integral part of a quotient of N divided by M, and a signal processing unit having a function of generating image signals by using the output signals of the image sensing device."
Plain-language overview of the independent claims
Claim 1 — Camera. A camera with (a) a grid-array image sensor; (b) an image‑instability detector (the spec's gyro sensors 16a/16b) that detects how much the camera is shaking; (c) a signal‑processing unit that builds image signals at a "predetermined view angle" from the sensor's effective pixels, doing three distinct things depending on mode:
- Static‑image monitoring: forms images at a first view angle using a first effective set of pixels.
- Static‑image recording: forms images using all effective pixels of the sensor (i.e., full resolution, no mixing/culling).
- Moving‑video recording: forms images at a second view angle, different from the first, using a second effective set of pixels that is only a portion of the array — and it shifts the position of that pixel set based on the detected shake amount to correct image instability (electronic stabilization via read‑out window shifting).
The claim also requires (d) a display unit that displays the image corresponding to the formed signals. The essence: the still‑monitor view angle differs from the video‑recording view angle, and the video mode sacrifices a border of pixels so the read‑out window can be moved for stabilization.
Claim 2 — Camera, dependent. The first view angle (static‑image monitoring) is larger than the second view angle (moving video). In other words, the video mode uses a narrower/tighter field of view than the still‑monitoring preview.
Claim 3 — Method of operating a camera. A method for a camera having the same hardware elements (grid sensor, signal‑processing unit, display unit, image‑instability detector), comprising: selecting between a static image mode and a moving video mode, and then selecting an operation:
- in static image mode: monitoring or recording;
- in moving video mode: recording.
Then it recites the same substantive rules as claim 1: monitoring → first view angle / first effective pixel set; static recording → all effective pixels; moving‑video recording → second, different view angle using a portion of the array, with the pixel‑set position shifted according to detected image instability to correct it.
Claim 4 — Method, dependent. Same relative‑angle limitation as claim 2: the first view angle is larger than the second.
Note on scope: Unlike the parent '493 patent's broader claims (which recite pixel mixing/culling to match a television system's effective scanning lines), this '729 claim set is drafted around mode‑dependent view angle plus shake‑driven window shifting — which is why the later Maxell v. LG complaint asserted claims 3 and 4 (see below).
Litigation and PTAB posture (with sources)
- Maxell v. ZTE Corp., E.D. Tex. 5:16‑cv‑00179 — the '729 was among seven/eight asserted Maxell patents; the 2018 jury verdict was ~$43.3 million for willful infringement. (unifiedpatents portal; Maxell counsel letter describing the ZTE verdict)
- IPR2018‑00238 (Unified Patents) — filed against the '729; not instituted on the merits per the Google Patents family record.
- Maxell v. LG Electronics, E.D. Tex. 5:23‑cv‑00152 (filed 2023‑12‑29) — the '729 was asserted, with at least claims 3 and 4 identified, on a theory that the accused products use a gyroscope/image‑instability detector to vary the sensor pixel portion used so that moving‑video mode has a different view angle than static mode. (complaint analysis, Ex Parte AI‑Lab)
- Maxell v. LG Electronics, N.D. Cal. 5:24‑cv‑04972 — parallel action; the '729 was one of the patents with a pending LG IPR petition. (MLex/Law360 summary, 2025‑04‑29)
- IPR2025‑00444, LG Electronics Inc. et al. v. Maxell Ltd (filed 2025‑01‑10) — challenged the '729 with grounds built on Misawa '482, Parulski '218, Kawahara '361, and Tomita '881 (Hoarty declaration). Terminated by settlement before institution on 2025‑07‑21; settlement agreement kept confidential (35 U.S.C. § 317(b)). (PTAB termination decision; IPVerse case page)
- Ex parte reexamination 90/014,628 — LG filed its prosecution history as an exhibit in the '729 IPR. Per Maxell's Apple‑case filing, EPR 90/014,628 was instituted 2021‑01‑28 against U.S. 8,339,493 (the '729's parent), not the '729 itself. (Maxell v. Apple E.D. Tex. 5:19‑cv‑00036 Doc. 649)
On the CAFC 2026 docket request — explicit uncertainty
I did not find any Federal Circuit docket involving U.S. 8,736,729. Searches returned 2026 CAFC dockets involving Maxell and Samsung — Samsung Electronics Co., Ltd. v. Maxell, Ltd., No. 26‑1320 (Fed. Cir., docketed Jan. 7, 2026) and Maxell, Ltd. v. Samsung Electronics Co., Ltd., No. 26‑1330 (Fed. Cir., docketed Jan. 12, 2026) — but these appear tied to Maxell's video‑processing patents in the Samsung dispute, not to the '729. (Docket Alarm, Maxell/Samsung Federal Circuit entries)
Two further points of caution:
- The PTAB proceedings on the '729 both ended without a final written decision (IPR2018‑00238 not instituted; IPR2025‑00444 dismissed on settlement pre‑institution), so as of the record there is no PTAB merits decision that would create a 2026 CAFC appeal on this patent.
- Some third‑party case commentary states the '729 "previously survived validity challenges in inter partes review." That phrasing is imprecise — the documented outcome on the '729 is non‑institution and settlement, not a merits win. I flag this rather than adopt it.
Bottom line: Bibliographic and claim details above are authoritative from the patent text; litigation/PTAB details are corroborated by PTAB and court documents. The existence of a 2026 CAFC appeal specifically concerning U.S. 8,736,729 is unconfirmed — if such a docket exists, it did not surface in these searches.
Generated 9/28/2026, 6:04:35 PM
Cases on file (5)
Group view →Specific litigation cases in our database that name US patent 8736729. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- LG Electronics USA Inc. v. Maxell, Ltd.filed Jan 10, 2025IPR2025-00444USPTO Patent Trial and Appeal Boardterminated Jul 21, 2025terminated-settled
Defendants: Maxell, Ltd.
- Maxell, Ltd. v. LG Electronics Inc. et al.filed Dec 29, 20235:23-cv-00152; 5:24-cv-04972U.S. District Court for the Eastern District of Texas (originally); transferred to U.S. District Court for the Northern District of Californiaterminated Jul 2, 2025transferred; closed/dismissed (settlement)
Defendants: LG Electronics Inc., LG Electronics U.S.A., Inc.
Other patents asserted: 6856760, 6973334, 7199821, 10244284, 8339493, 7421188, 9818449, 10199072
- Maxell, Ltd. v. Apple Inc.filed Feb 19, 20216:21-cv-00158U.S. District Court for the Western District of Texas, Waco Divisionterminated Apr 1, 2021dismissed with prejudice
Defendants: Apple Inc.
- Hitachi Maxell, Ltd. v. ZTE Corp. et al.filed Nov 18, 20165:16-cv-00179U.S. District Court for the Eastern District of Texas, Texarkana Divisionjury verdict (willful infringement; damages awarded)
Defendants: ZTE Corp., ZTE (USA) Inc.
Other patents asserted: 8339493
- Maxell, Ltd. v. ZTE Corporation et al.filed Nov 17, 20165:16-cv-00179-RWSU.S. District Court for the Eastern District of Texas, Texarkana Divisionterminated Mar 11, 2019settled
Defendants: ZTE Corporation, ZTE USA Inc.
Other patents asserted: 8098695, 5396443, 6748317, 8339493, 6408193, 6329794, 6816491
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll search for litigation involving US patent 8736729 across patent litigation databases.
Let me dig into the specific district court cases listed for this patent family and the IPR proceedings.
Litigation Involving U.S. Patent No. 8,736,729 ("Electric Camera")
Below is what the searches returned for the specific patent number 8,736,729 (application 13/681,495; original assignee Hitachi Consumer Electronics Co., Ltd.; now Maxell, Ltd.). I have filtered out results for other family members (e.g., 8,339,493; 8,059,177; 9,100,604; 10,244,284; 7,421,188; 9,818,449; 10,199,072) unless they appear in the same case as the '729 patent.
Federal district court litigation
1. Hitachi Maxell, Ltd. v. ZTE Corp. and ZTE (USA) Inc.
- Jurisdiction: U.S. District Court for the Eastern District of Texas (Texarkana Division)
- Case No.: 5:16-cv-00179
- Filed: November 18, 2016
- Role of '729: Asserted; the complaint asserted eight U.S. patents, including U.S. 8,736,729 ("Electric camera") and U.S. 8,339,493 ("Electric camera").
- Outcome/status: In or about July 2018 a jury found ZTE liable for willful infringement and awarded Maxell approximately $43.3 million in damages (press reports note possible enhancement up to treble damages). Separately, ZTE filed invalidation actions in China against related Maxell patents. Source (docket reference confirming '729 asserted in the ZTE case): the Joint Case Management Statement in the LG case, which lists Maxell, Ltd. v. ZTE Corp., et al., No. 5:16-cv-179 (E.D. Tex.) as "involving Asserted U.S. Patent Nos. 8,339,493 and 8,736,729." (See also the Google Patents family-litigation entry linking E.D. Tex. 5:16-cv-00179.) Caveat: press coverage confirms the $43.3M verdict and the E.D. Tex. filing date, but the reporting does not break the verdict down by patent — I cannot confirm from these sources that the '729 patent specifically was among the patents tried (as opposed to being asserted and then dropped/dismissed).
2. Maxell, Ltd. v. Apple Inc.
- Jurisdiction: U.S. District Court for the Western District of Texas, Waco Division
- Case No.: 6:21-cv-00158
- Filed: February 19, 2021 (Judge Alan D. Albright)
- Role of '729: Asserted — the complaint attached the '729 patent as Exhibit 3 (twelve patents asserted total).
- Outcome/status: Dismissed with prejudice on April 1, 2021, on the parties' joint motion (filed March 24, 2021); each side bore its own fees and costs. This early, consensual dismissal is consistent with a settlement/license.
- Sources: Justia docket (https://dockets.justia.com/docket/texas/txwdce/6:2021cv00158/[1123761](/patent/1123761)); Patexia docket; Docket Alarm order text.
3. Maxell, Ltd. v. [LG Electronics Inc.](/litigations/by-plaintiff/LG%20Electronics%20Inc.) and LG Electronics U.S.A., Inc.
- Jurisdiction / Case Nos.: Originally filed in the Eastern District of Texas, No. 5:23-cv-00152 (filed December 29, 2023, Judge Robert W. Schroeder III). Transferred under 28 U.S.C. §1404(a) to the Northern District of California, where it became No. 5:24-cv-04972 (assigned Aug. 9, 2024; later reassigned to Judge Noël Wise).
- Filed: December 29, 2023
- Role of '729: Asserted — one of nine patents asserted by Maxell (U.S. 6,856,760; 6,973,334; 7,199,821; 10,244,284; 8,339,493; 8,736,729; 7,421,188; 9,818,449; 10,199,072). Accused products included LG smartphones, tablets, and "Gram" laptops.
- Outcome/status: The case was transferred to N.D. Cal. (transfer granted July 1, 2024), and then closed on July 2, 2025, after the parties filed a stipulation of dismissal (June 30, 2025). A PatSnap report describes the dispute as "dismissed" and characterizes the resolution as a with-prejudice dismissal binding Maxell and LG as to the accused LG products — consistent with a settlement.
- Sources: Justia/PACER Monitor dockets; CourtListener (https://www.courtlistener.com/docket/69032831/maxell-ltd-v-lg-electronics-inc/); N.D. Cal. Joint Case Management Statement (Ex. 2002).
PTAB proceedings (inter partes review) involving '729
4. LG Electronics USA Inc. et al. v. Maxell Ltd — IPR2025-00444
- Tribunal: USPTO Patent Trial and Appeal Board
- Filed: January 10, 2025 (Patent No. 8,736,729; Appl. No. 13/681,495; Tech Center 2600)
- Outcome/status: Terminated July 21, 2025 due to settlement prior to institution (35 U.S.C. § 317; 37 C.F.R. § 42.74). A joint motion to terminate and a confidential settlement agreement were filed July 1, 2025; a refund of post-institution fees was granted July 30, 2025. This IPR paralleled (and appears to have resolved alongside) the N.D. Cal. district court case above — it was one of a series of LG-filed IPRs (2025-00392/-00393/-00394/-00518/-00519/-00520) against Maxell patents.
- Source: https://portal.unifiedpatents.com/ptab/case/IPR2025-00444 (and IPVerse/GreyB case page noting "Terminated-Settled").
5. IPR2018-00238 (petitioner reported as Unified Patents; not instituted on the merits)
- The Google Patents page for US8736729 lists, under "Family has litigation," a PTAB case IPR2018-00238 filed (Not Instituted – Merits), with petitioner identified in that entry as Unified Patents, and a Darts-IP family-litigation link.
- Caveat: I could not independently verify from the sources retrieved that IPR2018-00238 was filed specifically against the '729 patent (as opposed to another member of this patent family, which has been the subject of numerous IPRs). Treat this entry as family-level and unconfirmed pending verification on the PTAB/Unified Patents portal.
Related USPTO proceeding (not litigation, but relevant)
- Ex parte reexamination Control No. 90/014,628 — the prosecution history of this reexamination appears in the exhibit list of IPR2025-00444, indicating the '729 patent was subject to ex parte reexamination. I did not retrieve the reexam's outcome; the patent's current Google Patents legal status shows "Expired – Fee Related."
Summary table
| Case / Proceeding | Plaintiff / Petitioner | Defendant / Patent Owner | Forum | Case No. | Filed | Status |
|---|---|---|---|---|---|---|
| Hitachi Maxell v. ZTE | Hitachi Maxell, Ltd. | ZTE Corp., ZTE (USA) Inc. | E.D. Tex. | 5:16-cv-00179 | 2016-11-18 | Jury verdict ~2018; ~$43.3M for willful infringement |
| Maxell v. Apple | Maxell, Ltd. | Apple Inc. | W.D. Tex. (Waco) | 6:21-cv-00158 | 2021-02-19 | Dismissed with prejudice 2021-04-01 |
| Maxell v. LG | Maxell, Ltd. | LG Electronics Inc.; LG Electronics U.S.A., Inc. | E.D. Tex. → N.D. Cal. | 5:23-cv-00152 → 5:24-cv-04972 | 2023-12-29 | Transferred 2024; closed/dismissed 2025-07-02 |
| LG v. Maxell (IPR) | LG Electronics USA Inc. et al. | Maxell, Ltd. | PTAB | IPR2025-00444 | 2025-01-10 | Terminated 2025-07-21 due to settlement |
| IPR2018-00238 | (Unified Patents, per Google Patents) | Maxell/Hitachi Maxell | PTAB | IPR2018-00238 | 2018 | Not instituted (family-level; unverified as to '729) |
Notes on scope and reliability: (a) I searched for the literal number 8736729 and did not return results for other numbers except where they appear in the same case. (b) The most authoritative confirmations of '729-specific assertion are the Apple complaint Exhibit 3, the LG Joint Case Management Statement listing the nine asserted patents, and the IPR2025-00444 record — all retrieved above. (c) Early cases in the family (e.g., 2019 Maxell v. Apple, E.D. Tex.) asserted other patents in the same portfolio and are not listed here. (d) I could not confirm whether the ZTE trial verdict specifically rested on the '729 patent or on other asserted patents; the $43.3M figure is drawn from press reports, not a court document I retrieved. If you need complaint-level verification of the ZTE and IPR2018-00238 entries, the underlying PACER/PTAB filings should be pulled directly.
Generated 9/28/2026, 6:04:36 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: LG Electronics USA Inc.
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll verify the PTAB proceedings via web search, since the structured ODP block reports none.
Let me verify the 2018 proceeding and check for any other AIA trials (PGR/CBM) on this patent.
Verification note / contradiction flag (read first)
The structured "PTAB proceedings on file" block supplied in this prompt states that the USPTO ODP API returns no AIA trial proceedings for US 8,736,729. That block is contradicted by the evidence:
- The patent's own Google Patents record (supplied as the authoritative full text) lists a PTAB case under "Family has litigation": IPR2018-00238 filed (Not Instituted – Merits), petitioner identified as "Unified Patents."
- Web search confirms a second, fully documented IPR on the '729: IPR2025-00444, LG Electronics v. Maxell, filed 2025-01-10, dismissed pre-institution on settlement 2025-07-21.
So the ODP ingest is incomplete for this patent (likely because a pre-institution dismissal is not carried as a "proceeding" in ODP's trial-case index, and the 2018 denial may be indexed under a sibling patent). Treat the ODP "no activity" signal as a data gap, not a fact. Everything below is grounded in the PTAB papers and portal records that did surface.
Proceedings overview
Three-apparent-candidates → two credible proceedings. For AIA trials specifically on U.S. 8,736,729 (Appl. 13/681,495, Tech Center 2600), the record shows two proceedings: 0 with any claims invalidated, 0 with any claims sustained in a Final Written Decision, 1 settled and dismissed pre-institution (IPR2025-00444), and 1 institution denial (IPR2018-00238, family-level; unverified as to this patent). Bottom line for a defendant: all four claims (1–4) are UNTESTED at the PTAB — no FWD has ever issued, no claim has been cancelled, and no claim has been adjudicated patentable. No § 315(e)(1)/(e)(2) estoppel has attached to anyone, so the LG petition art (Misawa, Parulski, Kawahara, Tomita) remains fully available. And because the patent's term expired 2020-03-08 (terminal-disclaimer-shortened to U.S. 6,765,616 / 7,403,226), the practical defensive posture is not "hardened patent" or "invalidated patent" but "expired, never merits-tested, and outside any recoverable damages window."
IPR2025-00444 — LG Electronics, Inc. and LG Electronics USA, Inc. v. Maxell, Ltd.
Type: Inter Partes Review (post-AIA Patent 8,736,729 B2; Appl. 13/681,495; Tech Center 2600)
Filed: 2025-01-10
Status: Terminated – Settled (verbatim panel caption: "DISMISSAL Due to Settlement Prior To Institution of Trial — 35 U.S.C. § 317; 37 C.F.R. § 42.74", Paper 8, 2025-07-21). Plain-English gloss: the petition was dismissed before the Board ever decided institution.
Judge panel: Terrence W. McMillin, Kevin C. Trock, and Monica S. Ullagaddi, Administrative Patent Judges; opinion authored by APJ McMillin.
Petition grounds: The petition (Paper 2, 2025-01-10) relied on, per the exhibit list (Unified Patents portal / GreyB IPVerse):
- Ex. 1005 — U.S. 5,444,482 (Misawa)
- Ex. 1006 — U.S. 6,292,218 (Parulski)
- Ex. 1007 — U.S. 6,963,361 (Kawahara)
- Ex. 1008 — U.S. 6,690,881 (Tomita)
- Ex. 1003 — Declaration and CV of W. Leo Hoarty (petitioner's technical expert)
- Ex. 1010 — PTAB Interim Procedure for Discretionary Denials memorandum; Ex. 1011 — Federal Court Management Statistics (i.e., materials staged to rebut a § 314(a) / Fintiv discretionary-denial argument)
- Ex. 1012 — Prosecution History of Reexamination Control No. 90/014,628 (Parts 1–4)
Ground count and claim-by-claim mapping: NOT VERIFIED. The petition PDF text was not retrievable in my searches, so I will not state which of claims 1–4 were challenged or whether the grounds were § 102 anticipation, § 103 obviousness, or both. Given the patent has only four claims, a full-front (1–4) challenge is likely, but that is inference, not record.
Institution decision: None issued. The Board expressly noted: "We have not yet decided whether to institute an inter partes review based upon the Petition…" The statutory three-month institution deadline never produced a decision because the parties moved to terminate first.
Final Written Decision: None. The termination order states verbatim: "This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a)." No claim was cancelled, and no claim was upheld. Claims 1–4 remain unadjudicated.
Settlement / termination: Joint Motion to Terminate (Paper 6) and Joint Request to treat the settlement as business confidential (Paper 7) filed 2025-07-01; Confidential Settlement Agreement, Ex. 1013, filed the same day. The parties represented they "have reached a settlement as to all the disputes in this proceeding and as to [US Patent No. 8,736,729]" and that "[n]o other such agreements, written or oral, exist." The Board granted the joint request, held the agreement to be business confidential under 35 U.S.C. § 317(b) / 37 C.F.R. § 42.74(c), and ordered it kept separate from the '729 file. Terms are confidential. Post-institution fee refund approved 2025-07-30 (Paper 10).
Key docket timeline (Unified Patents portal / IPVerse): petition 2025-01-10 · PO mandatory notices 2025-01-31 · PO power of attorney · notice of filing date accorded 2025-03-10 · exhibit expunged 2025-05-06 · Board email correspondence 2025-06-04 · joint motion to terminate 2025-07-01 · termination decision 2025-07-21 · refund 2025-07-30.
Counsel: Petitioner — Timothy Riffe, Jennifer Huang, Robert Schwentker, Bryan Cannon, Matthew Chun, Alex Yu (Fish & Richardson P.C.). Patent Owner — Robert Pluta, Nicholas Ciulla (Mayer Brown LLP).
Appeal: None possible on the merits — no FWD, so no appealable § 318 decision. No Federal Circuit docket arises from this proceeding. (The 2026 CAFC dockets surfaced in prior research — [Samsung Electronics Co.](/litigations/by-defendant/Samsung%20Electronics%20Co.) v. Maxell, No. 26-1320, and Maxell v. Samsung, No. 26-1330 — are unrelated to the '729.)
Defensive value: Low as a validity shield, high as intelligence. You get LG's complete invalidity theory and expert declaration for free, with zero estoppel attached to anyone. A defendant today can lift Misawa/Parulski/Kawahara/Tomita (and the Hoarty declaration) wholesale. But you cannot point a judge to any PTAB finding — there is none.
Sources: Termination Decision — https://www.docketalarm.com/cases/PTAB/IPR2025-00444/LG_Electronics_Inc._v._Maxell_LTD/docs/07-21-2025-Board/Termination_Decision__Pre_DI_settlement-8-Termination_Decision__Due_to_Settlement_Prior_To_Institution_of_Trial_35_USC_sec_317_37_CFR_sec_4274.pdf · Portal record with exhibit list — https://portal.unifiedpatents.com/ptab/case/IPR2025-00444 · https://ipverse.greyb.com/ptab-web/cases/case-details/IPR2025-00444
IPR2018-00238 — (Unified Patents, per Google Patents record) v. Maxell / Hitachi Maxell
- Type: Inter Partes Review
- Filed: 2018 (exact filing date not verified)
- Status: Not Instituted – Merits (verbatim from the patent's own Google Patents litigation record; petitioner listed there as "Unified Patents PTAB Data")
- Judge panel: Not verified (no institution decision retrieved)
- Petition grounds: Not verified. No petition papers surfaced.
- Institution decision: Denied per the Google Patents record ("Not Instituted – Merits"). The specific reasoning (merits failure vs. discretionary denial) is not verified — the record entry says "Merits," which would imply a substantive failure of the petitioner's showing rather than a Fintiv denial, but I cannot confirm that from primary documents.
- Final Written Decision: None (institution denied).
- Settlement / termination: None reported.
- Appeal: None.
- Reliability caveat (important): The only evidence tying IPR2018-00238 to the '729 specifically is the Google Patents family-level litigation line, which explicitly depends on a third-party (Unified Patents) licensed dataset. My independent searches for "IPR2018-00238" did not return a '729-specific document. During the same 2018 window, sibling family members were hit with IPRs by Olympus — IPR2018-00904 (U.S. 8,339,493), IPR2018-00908 and -00909 (U.S. 9,100,604), IPR2018-00910 (U.S. 8,059,177) — and later Maxell filed IPR2019-00068 ('226), -00069 ('517), -00087 ('616), -00097 ('604). Treat IPR2018-00238 as family-level and unconfirmed as to the '729 until the PTAB E2E docket is pulled directly.
- Defensive value: Even if it is the '729, an institution denial creates no estoppel and no patentability finding. It is not a shield. It is at most a weak signal that a 2018-era obviousness theory against claims 1–4 failed at the reasonable-likelihood threshold — a threshold far below the preponderance standard that governs trial.
- Sources: Google Patents US8736729B2 family-litigation record (in the authoritative text above); PTAB E2E (https://ptab.uspto.gov) for direct verification.
Non-AIA proceeding distinguished (not an AIA trial)
Ex parte reexamination Control No. 90/014,628. LG filed this prosecution history as Exhibit 1012 in IPR2025-00444. An ex parte reexamination is not an AIA trial proceeding and is outside the scope of this task, but it matters in two ways: (a) it shows the '729's claims were the subject of a prior USPTO validity challenge, and (b) the prior research flagged an ambiguity — Maxell's filing in Maxell v. Apple (E.D. Tex. 5:19-cv-00036, Doc. 649) indicated EPR 90/014,628 was instituted 2021-01-28 against U.S. 8,339,493 (the '729's parent), not the '729 itself, yet LG submitted that same reexam history as an exhibit in the '729 IPR. I could not resolve which patent the reexamination certificate attaches to. Flagging rather than adopting either version.
Strategic summary
Claim status: 100% untested. The '729 issued with exactly four claims (claims 1–2 apparatus: mode-dependent view angle plus shake-driven read-out-window shifting; claims 3–4 the corresponding method). Across both PTAB proceedings on this patent, no Final Written Decision has ever issued. Claims 1–4 are therefore, in PTAB terms, neither CANCELED nor SUSTAINED nor even INSTITUTED. The Maxim/family commentary that the '729 "survived" or was "hardened" by IPR is wrong — the documented outcomes are non-institution and a pre-institution settlement, which are procedural non-events on validity. (This is consistent with the caution already raised in the previously generated summary; no contradiction to reconcile.)
Estoppel landscape: essentially empty. § 315(e)(1) and § 315(e)(2) estoppel both key off "a final written decision under section 318(a)." There is none here, so:
- LG and its privies are not estopped in the (now dismissed, with-prejudice) N.D. Cal. action or anywhere else. To the extent the LG/LG-IPR art was ever "raised," nothing triggers the statutory bar.
- Unified Patents, if it was indeed the IPR2018-00238 petitioner, is likewise not estopped (institution denied).
- For a current defendant, every prior-art ground — including Misawa, Parulski, Kawahara, Tomita, the Hoarty declaration, and the reexam record — is available in an IPR, a DJ action, or at trial. The only soft constraints on a fresh petition are discretionary: § 325(d) (art already before the Office) and General Plastic / § 314(a) (follow-on petition timing, now informed by the fact that the prior petition settled).
Pattern signals.
- One patent owner, two different petitioners, neither got to merits. LG (a competitor) gave it a serious, expert-supported shot in 2025 and bought its way out together with the nine-patent district court case rather than await institution. A petitioner does not usually settle pre-institution on a patent it thinks is clearly invalid and worthless — but it also does not usually settle a patent it fears, so read this as commercial pragmatism, not as either party's concession.
- Defensive aggregator present but only marginally: Unified Patents appears in the 2018 record (family-level, unverified). Its involvement, if real, produced no merits decision.
- No patent owner appellate aggression on this patent: because no FWD exists, Maxell has had nothing to appeal on the '729.
- Expiry is the dominant fact. Google Patents records anticipated expiration 2020-03-08, status Expired – Fee Related, consistent with the terminal disclaimer filed in sibling application 14/264,243 tying term to U.S. 6,765,616 and U.S. 7,403,226 (both filed 2000-03-08). A patent whose last possible infringement date was 2020-03-08 is outside the 35 U.S.C. § 286 six-year damages lookback for any complaint filed today (2026-09-28), and supports no prospective injunction. Coupled with the fact that Maxell dismissed the only live assertion with prejudice and settled the only IPR, the '729 today is best characterized as litigation residue, not a live weapon.
Recommended next steps
- Do not accept the ODP "no AIA proceedings" signal at face value. Pull the PTAB E2E docket for IPR2025-00444 (https://ptab.uspto.gov) and for IPR2018-00238 directly; the latter is the one genuinely open factual question — confirm whether it names U.S. 8,736,729 or a sibling. Nothing in the public record retrieved so far establishes which patent IPR2018-00238 attacked.
- Quote the operative disposition, not a characterization of it. The sentence to carry into any brief or demand-letter response is the Board's own: "This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a)." (IPR2025-00444, Paper 8 at 2, 2025-07-21.) There is no PTAB finding of validity on claims 1–4 to cite against you.
- Preserve and reuse the LG record with zero estoppel risk. Because no FWD issued, LG's petition, exhibit list (Misawa Ex. 1005; Parulski Ex. 1006; Kawahara Ex. 1007; Tomita Ex. 1008) and the Hoarty Declaration (Ex. 1003) are usable by any party in any forum. Budget for a petition that improves on LG's record rather than repeating it, and expect a § 325(d)/General Plastic fight given the 2018 and 2025 history.
- Lead with expiry. If a demand letter or complaint asserts the '729 today, the threshold response is that the patent expired 2020-03-08 (terminal disclaimer to U.S. 6,765,616 / 7,403,226), placing all infringement outside the § 286 six-year recovery window and foreclosing injunctive relief. That argument does not depend on any PTAB outcome and is not affected by the settlement.
- No CAFC watch needed on this patent. With no FWD from either proceeding, there is no PTAB appeal to monitor and, as flagged in the prior section, no 2026 Federal Circuit docket specific to U.S. 8,736,729 has been identified. The 26-1320 / 26-1330 Maxell–Samsung appeals concern other patents.
Confidence flags: (i) IPR2025-00444 details — panel, dates, disposition text, counsel, exhibits — are high confidence, sourced from the Board's own termination order. (ii) The claim-level scope of the LG petition and its statutory grounds are unverified (petition text not retrieved). (iii) IPR2018-00238's existence on this patent is unverified and rests solely on a third-party family-level dataset. (iv) The reexamination patent-identity ambiguity (90/014,628 → '493 vs. '729) is unresolved.
Generated 9/28/2026, 6:24:47 PM
Ownership chain (6)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2000-03-08 · Assignment
Takahiro Nakano; Ryuji Nishimura; Toshiro KinugasaHitachi, Ltd.
? · recorded 2013-06-12 · Assignment
Hitachi, Ltd.Hitachi Consumer Electronics Co., Ltd.
internal reorg
2014-08-28 · recorded 2014-09-08 · reel 033685/0883 · Assignment
Hitachi Consumer Electronics Co., Ltd.Hitachi Maxell, Ltd.
internal reorg
2017-10-01 · recorded 2018-01-25 · reel 045142/0208 · Assignment
Hitachi Maxell, Ltd.Maxell, Ltd.
Correspondent: Nadeen Nsouli
change of name only
2021-10-01 · recorded 2021-11-29 · reel 058255/0579 · Merger
internal reorg
2021-10-01 · recorded 2021-12-03 · reel 058666/0407 · Change of Name
change of name only
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record for US 8,736,729 using the USPTO assignment databases and related sources.
Let me look for the specific assignment reel/frame records and correspondents.
Let me dig into specific assignment records via Plainsite and other assignment databases.
Assignment Record Reconstruction — US 8,736,729 B2 ("Electric Camera")
Source note / verification status. The USPTO Assignment Center search page (https://assignmentcenter.uspto.gov/, mirrored at https://assignment.uspto.gov/patent/index.html) could not be queried directly in this session (dynamic search interface). The reel/frame data below was recovered from Google Patents legal-events tables for the family and from a certified-document reproduction in a PTAB exhibit. Four of the five post-issue reel/frames were read off the sibling continuation U.S. 9,100,604 (Appl. 14/264,243) and the Maxell-family assignment record surfaced in a PTAB exhibit for Appl. 12/028,885. Because these are bulk portfolio conveyances (the 045142/0208 document alone is 141 pages), the same reel/frame carries the '729 — but the reel/frame strings themselves should be re-verified against the '729's own Assignment Abstract of Title before being quoted in any filing. I flag every spot where I am inferring rather than reading directly.
Inventors
| Inventor | Location of record | Employer at filing |
|---|---|---|
| Takahiro Nakano | Tokyo, JP | Hitachi, Ltd. (consumer-imaging / MPEG-camera group) |
| Ryuji Nishimura | Tokyo, JP | Hitachi, Ltd. |
| Toshiro Kinugasa | Tokyo, JP | Hitachi, Ltd. |
- All three inventors appear on the entire family (U.S. 6,765,616 → 7,403,226 / 8,059,177 → 8,339,493 → 8,736,729 → 9,100,604 → 9,544,517 → 10,554,917 → 10,462,403), so the inventive entity is stable across 20 years of continuations.
- No "inventor-departure" red flag is assessable. The application was filed 2000-03-08 and the '729 did not issue until 2014-05-27 (a 14-year continuation chain). Any inventor departure from Hitachi in 2000–2001 would be invisible in the assignment record and is irrelevant to NPE analysis here. I found no record of any inventor taking an assignment, license-back, or equity interest in a downstream entity — a common tell in fire-sale chains. Absent.
Original assignee
Named on the issued patent: Hitachi Consumer Electronics Co., Ltd. ("HCE"), per the Google Patents assignee field. The application itself was filed by HCE (family record: "2012-11-20 Application filed by Hitachi Consumer Electronics Co Ltd"), the immediate predecessor being Hitachi, Ltd.
Chain of custody of the asset (as Maxell pleaded it): In 2009 Hitachi, Ltd. moved its consumer-product-facing IP to HCE; in 2013 HCE moved the IP to Hitachi Maxell, Ltd.; Hitachi Maxell later became Maxell, Ltd. by reorganization and name change. (Source: Maxell's own complaint ¶ 4, Maxell, Ltd. v. Apple Inc., W.D. Tex. 6:21-cv-00158, Doc. 1 — https://www.docketalarm.com/cases/Texas_Western_District_Court/6--21-cv-00158/Maxell_Ltd._v._Apple_Inc/docs/1.pdf)
Did they ship a product embodying the claims? Yes. The specification describes a CCD "MPEG camera" architecture, and the family's own prior-art/utility record (cited in the file wrappers of the continuations) includes the Hitachi MPEGCAM MP-EG1/MP-EG1A — described in contemporaneous press as the world's first MPEG camera — plus Hitachi's camcorder line. The claimed subject matter (mode-dependent read-out window + gyro-driven window shifting) maps onto Hitachi camcorder digital-zoom/stabilization features.
Current status: Hitachi, Ltd. and Hitachi Consumer Electronics are operating Japanese conglomerate entities (Hitachi, Ltd. is public, TSE:6501). Maxell, Ltd. (TSE:6810) is a public Japanese operating company selling batteries, storage media, projectors, and consumer accessories; it acquired the portfolio as an internal reorganization, not a bankruptcy or divestiture-of-shell. No bankruptcy, no Chapter 7/11, no dissolution appears anywhere in the chain. The '729 itself is Expired – Fee Related (lapse for non-payment of maintenance fees; sibling '604 shows the lapse event at 2023-08-04), and the term was terminally disclaimed to U.S. 6,765,616 / 7,403,226.
Assignment timeline
1. Circa 2000 (filing) — inventors → Hitachi, Ltd.
- Executed on or about 2000-03-08 / recorded c. 2000 — Reel/frame: not retrieved.
- Conveyance: Assignment of inventors' rights
- Assignor: Takahiro Nakano; Ryuji Nishimura; Toshiro Kinugasa
- Assignee: Hitachi, Ltd.
- Correspondent: not retrieved
- Context: standard original corporate assignment at filing (employment/invention assignment). I did not obtain this reel/frame and am not going to invent one.
2. 2009-xx-xx (perlitigation narrative) / recorded 2013-06-12 — Hitachi, Ltd. → Hitachi Consumer Electronics Co., Ltd.
- Reel/frame: not retrieved.
- Conveyance: Assignment of assignors' interest (corporate restructuring)
- Assignor: Hitachi, Ltd.
- Assignee: Hitachi Consumer Electronics Co., Ltd.
- Correspondent: not retrieved
- Context: internal reorganization — Hitachi, Ltd. carved its consumer-product IP into HCE. Discrepancy to flag: Maxell's complaint dates this "2009," while Google Patents records the assignment event at 2013-06-12. Most likely the instrument was executed in 2009 but not recorded until 2013 (the family's later Maxell-related recordings were also made years after execution). Treat the 2013-06-12 figure as the recording date.
3. Executed 2014-08-28 / recorded 2014-09-08 — HCE → Hitachi Maxell, Ltd.
- Reel 033685 / Frame 0883
- Conveyance: ASSIGNMENT OF ASSIGNORS' INTEREST ("see document for details")
- Assignor: Hitachi Consumer Electronics Co., Ltd.
- Assignee: Hitachi Maxell, Ltd. (Osaka/Ibaraki-shi, JP)
- Correspondent: not retrieved for this entry
- Context: internal reorganization / consolidation of the Hitachi consumer-IP estate into Hitachi Maxell. Note the timing quirks: the '729 issued 2014-05-27 to HCE, and the assignment to Hitachi Maxell is effective 2014-08-28 — i.e., after issuance. This is a portfolio-level conveyance, not a pre-filing paper trail.
- (Reel/frame read from the sibling U.S. 9,100,604 legal-events entry, which carries the identical "ASSIGNOR: HITACHI CONSUMER ELECTRONICS CO., LTD.; REEL/FRAME: 033685/0883, Effective date: 20140828." Same bulk document covers the '729.)
4. Executed 2017-10-01 / recorded 2018-01-25 — Hitachi Maxell, Ltd. → Maxell, Ltd.
- Reel 045142 / Frame 0208 (141 pages — bulk portfolio assignment)
- Conveyance: ASSIGNMENT OF ASSIGNOR'S INTEREST
- Assignor: Hitachi Maxell, Ltd.
- Assignee: Maxell, Ltd. (1 Koizumi, Oyamazaki, Otokuni-gun, Kyoto, JP)
- Correspondent: NADEEN NSOULI, 71 South Wacker Drive, Chicago, IL 60606
- Context: change of corporate name / brand reorganization (Hitachi Maxell → Maxell), executed as a fresh assignment instrument rather than a §1.1(a) name-change recordation. This is the single recorded assignment whose correspondent I could tie down.
- (Reel/frame and correspondent confirmed in the certified USPTO "Patent Assignment Abstract of Title" reproduced in a PTAB exhibit — the same 045142/0208 document is the record for U.S. 10,128,850, Appl. 12/028,885, recorded 01/25/2018, exec. 10/01/2017, assignor Hitachi Maxell, Ltd., assignee at 1 Koizumi, Oyamazaki, Otokuni-gun, Kyoto, correspondent "NADEEN NSOULI, 71 SOUTH WACKER DRIVE, CHICAGO, IL 60606.")
5. Effective 2021-10-01 / recorded 2021-11-29 — Maxell, Ltd. → Maxell Holdings, Ltd.
- Reel 058255 / Frame 0579
- Conveyance: MERGER
- Assignor: Maxell, Ltd.
- Assignee: Maxell Holdings, Ltd.
- Correspondent: not retrieved (same Chicago correspondent channel is plausible but unconfirmed)
- Context: pure holding-company reorganization — Maxell, Ltd. became a subsidiary of a new Maxell Holdings, Ltd. through a share/asset merger. No third party, no monetization vehicle.
6. Effective 2021-10-01 / recorded 2021-12-03 — Maxell Holdings, Ltd. → Maxell, Ltd.
- Reel 058666 / Frame 0407
- Conveyance: CHANGE OF NAME
- Assignor: Maxell Holdings, Ltd.
- Assignee: Maxell, Ltd.
- Correspondent: not retrieved
- Context: change of name only — the holding company was renamed "Maxell, Ltd.," restoring the operating name to the ultimate parent. This is the current owner of record, matching Google Patents' "Current Assignee: Maxell Ltd."
- (Entries 5 and 6 reel/frames read from the sibling '604 legal-events table: "MAXELL HOLDINGS, LTD., JAPAN … MERGER; … REEL/FRAME: 058255/0579" and "CHANGE OF NAME; … MAXELL HOLDINGS, LTD.; REEL/FRAME: 058666/0407," both effective 20211001. The '729's own Google Patents event list shows the matching recorded dates 2021-11-29 (merger) and 2021-12-03 (name change), so the reel/frames almost certainly carry both patents.)
Timeline diagram
timeline
title Ownership of US 8736729
2000 : Filed by Hitachi Ltd
: Inventors assign rights to Hitachi
2009 : Hitachi IP moves to consumer electronics unit
: Instrument recorded in 2013
2014 : HCE assigns estate to Hitachi Maxell
2017 : Hitachi Maxell assigns to Maxell Ltd
: Recorded January 2018
2021 : Merger into Maxell Holdings Ltd
: Renamed Maxell Ltd
NPE / troll-pattern signals
1. Shell-entity transfer — NOT PRESENT.
Every assignee in the chain is a named, publicly identifiable operating corporation in the Hitachi/Maxell corporate family: Hitachi, Ltd. → Hitachi Consumer Electronics Co., Ltd. (reel 2013-06-12 event) → Hitachi Maxell, Ltd. (reel 033685/0883) → Maxell, Ltd. (reel 045142/0208) → Maxell Holdings, Ltd. (reel 058255/0579) → Maxell, Ltd. (reel 058666/0407). No "IP / Licensing / Ventures" suffix, no Delaware/Texas single-purpose LLC, no registered-agent-service address. Maxell, Ltd. is TSE-listed (6810) and ships products.
2. Known asserter in the chain — NOT PRESENT (for the NPE lists).
No Acacia, Marathon, Intellectual Ventures, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation, or Spangenberg entity appears anywhere in the chain. Maxell is a frequent plaintiff, and Unified Patents' own case page classifies it as "Operating Company" (https://portal.unifiedpatents.com/ptab/case/IPR2025-00444). Frequent assertion by an operating company is not the NPE signal; it's the opposite.
3. Repeat correspondent across the chain — WEAK / UNCLEAR (one confirmed appearance).
The only correspondent I could tie to a reel is Nadeen Nsouli, 71 South Wacker Drive, Chicago, IL 60606 on reel 045142/0208. A single appearance is expressly not a finding under the review criteria. I did not find the same name recurring across the other four reel/frames, and I could not retrieve correspondents for reels 033685/0883, 058255/0579, or 058666/0407. Do not treat this as an NPE tell — on its face it reads as the assignee's retained U.S. IP counsel handling a 141-page bulk portfolio recordation, which is ordinary operating-company behavior.
4. Cascading transfers — NOT PRESENT.
The transfers are spaced 2014 → 2017/2018 → 2021 (three-plus years apart) and each is intra-group. There is no <24-month LLC cascade and no shared-principal pattern.
5. Pre-litigation transfer — NOT PRESENT.
First suit naming the '729 is Hitachi Maxell, Ltd. v. ZTE, 5:16-cv-00179 (E.D. Tex., filed 2016-11-18). The nearest assignment (Hitachi Maxell → Maxell, reel 045142/0208) was executed 2017-10-01 — after the ZTE filing, not within six months before it. The prior link (HCE → Hitachi Maxell, effective 2014-08-28) predates the suit by ~27 months. Neither fits the pre-litigation-transfer window.
6. Bankruptcy fire-sale — NOT PRESENT.
No Hitachi or Maxell bankruptcy. The 2013/2014/2017/2021 transfers are a corporate reorganization (Hitachi's own account: "an effort to align its intellectual property with the licensing, business development, and research and development efforts of Maxell … in the mobile and mobile-media device market"). None of the Kodak/Nortel/Polaroid/Sun-style proceeding sales apply.
7. Privateering — UNCLEAR / WEAK AT BEST.
This is the only genuinely arguable signal: an operating parent (Hitachi, Ltd.) moved a consumer-IP estate into a separately managed affiliate (Hitachi Maxell / Maxell, Ltd.), which then asserted the estate against Apple, ZTE, ASUS, Huawei, and LG. That superficially resembles privateering. But it fails the classic definition on two facts: (a) Maxell is itself an operating company that ships products and expressly ties the asserted IP to its own product lines (wireless charging, flash drives, media players, storage, headphones — complaint ¶ 4), and (b) the transfer was a name/brand-driven internal reorganization, not a transfer to an unrelated assertion vehicle. Net: not present as a privateering finding, though the "spin-out then assert" shape is worth a footnote.
8. Defensive aggregator — NOT PRESENT.
The chain does not terminate at RPX, AST, LOT Network, Unified Patents, or OIN. It terminates at Maxell, Ltd. (reel 058666/0407), an operating company, which is an active plaintiff through 2025 (N.D. Cal. 5:24-cv-04972 and the 2025 Samsung actions). The patent is not neutralized; it simply expired for non-payment of maintenance fees.
Verdict
Operating-company assertion
The entire custody chain is an intra-corporate reorganizations-of-named-operating-companies sequence — Hitachi, Ltd. → Hitachi Consumer Electronics (rec. 2013-06-12) → Hitachi Maxell, Ltd. (reel 033685/0883, eff. 2014-08-28) → Maxell, Ltd. (reel 045142/0208, exec. 2017-10-01) → Maxell Holdings, Ltd. (reel 058255/0579, merger) → Maxell, Ltd. (reel 058666/0407, name change) — with no shell LLC, no listed NPE, no repeat-NPE correspondent, no bankruptcy sale, and no pre-suit transfer window. The current owner, Maxell, Ltd., is a publicly traded Japanese manufacturer that ships products and sued direct competitors (ZTE, Apple, ASUS, Huawei, LG, Samsung) — which is precisely the "operating-company assertion" fact pattern, not an NPE pattern.
Verification link: https://assignmentcenter.uspto.gov/ (search by patent number 8736729; reciprocal index at https://assignment.uspto.gov/patent/index.html). Cross-referenced against Google Patents legal events for US 8,736,729 and US 9,100,604; the certified Assignment Abstract of Title for Appl. 12/028,885 (reel 045142/0208) reproduced in a PTAB exhibit; and Maxell's W.D. Tex. complaint 6:21-cv-00158 Doc. 1 ¶ 4.
Residual gaps (stated rather than filled): (i) the c.2000 invention-assignment reel/frame; (ii) the 2013-06-12 Hitachi→HCE reel/frame; (iii) correspondents for reels 033685/0883, 058255/0579, 058666/0407; and (iv) direct confirmation that reel 033685/0883, 045142/0208, 058255/0579, and 058666/0407 appear verbatim on the '729's own abstract (they were read on sibling/family records carrying the identical bulk conveyances). None of these gaps, on the available evidence, would change the verdict.
Generated 9/28/2026, 6:24:57 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll analyze the prior-art citations for U.S. 8,736,729. Let me first verify the patent's own citation record and then investigate the key references.
Let me investigate the remaining key references, especially those relating to image stabilization and mode-dependent pixel sets.
Prior-Art Analysis — U.S. Patent No. 8,736,729 B2 ("Electric Camera")
0. Scope and verification note
USPTO/patent-database lookup for 8,736,729: Confirmed. U.S. 8,736,729 B2, application 13/681,495, filed 2012‑11‑20, granted 2014‑05‑27, priority 2000‑01‑11 (JP 2000‑006064), title "Electric Camera," inventors Nakano/Nishimura/Kinugasa, 4 claims.
Per your instruction, I have excluded the many same-family/adjacent numbers that the database keeps surfacing (e.g., 8,339,493; 8,059,177; 9,100,604; 9,544,517; 10,554,917; 10,462,403; 7,403,226; 6,765,616), even though several of them appear inside the same case records. Where a family member is itself a cited reference against the '729, I say so explicitly and explain why it is (or is not) true prior art.
Two framing caveats before the reference-by-reference analysis:
- Legal framework matters here. The '729 carries a 2000‑01‑11 priority date, so it is governed by pre‑AIA 35 U.S.C. § 102, not the AIA's § 102(a)(1)/(a)(2). That means a U.S. patent document qualifies as § 102(e) art as of its U.S. filing date (or earliest U.S. effective filing), and printed publications qualify under § 102(a)/(b) if published before the critical date. Several references on the face of the '729 published after 2000 but have filing dates well before it — they are § 102(e) art, not § 102(b) art. I flag this for each.
- "Anticipation" is a strict standard. A § 102 reference must disclose every limitation of a claim, arranged as in the claim. No single reference in this patent's citation list discloses the full combination recited in claim 1 (grid sensor +
image-instability detector+ mode-dependent view angle + read-out window shifted by detected shake + display unit). Accordingly, most of these references are best characterized as § 103 combination art, and I say so rather than overstating § 102. The real-world invalidity challenge on this patent (IPR2025‑00444) likewise relied on a combination (Misawa '482 + Parulski '218 + Kawahara '361 + Tomita '881), not a single anticipatory reference — cross-reference the earlier litigation section.
1. The cited references (as they appear on the face of U.S. 8,736,729)
The '729 lists 20 references under "Citations." Their bibliographic entries (dates as given in the patent's own record — first date = priority/filing, second = publication/grant):
| # | Full citation | Priority/filing | Publication/grant | Assignee | Title |
|---|---|---|---|---|---|
| 1 | US 4,054,915 A | 1974‑09‑05 | 1977‑10‑18 | The General Corporation | Color television camera |
| 2 | JP H04‑323973 A | 1991‑04‑23 | 1992‑11‑13 | Hitachi, Ltd. | Picture input device |
| 3 | US 5,170,249 A | 1989‑04‑21 | 1992‑12‑08 | Hitachi, Ltd. | Digital signal processing apparatus having devices for delaying and combining color signals |
| 4 | US 5,187,569 A | 1989‑03‑03 | 1993‑02‑16 | Asahi Kogaku Kogyo KK | Solid state imaging device and electronic still camera using same |
| 5 | US 5,287,192 A | 1991‑07‑15 | 1994‑02‑15 | Sony Corporation | Solid-state imager for use with two different TV systems |
| 6 | JP H09‑270959 A | 1996‑03‑29 | 1997‑10‑14 | Sony Corp. | Digital electronic imaging device, imaging system, and imaging method |
| 7 | US 5,734,424 A | 1990‑08‑08 | 1998‑03‑31 | Canon KK | Image pickup apparatus capable of providing moving video signal and still video signal |
| 8 | US 5,828,406 A | 1994‑12‑30 | 1998‑10‑27 | Eastman Kodak Co. | Electronic camera having a processor for mapping image pixel signals into color display pixels |
| 9 | US 5,847,758 A | 1995‑08‑11 | 1998‑12‑08 | Sony Corporation | Color CCD solid-state image pickup device |
| 10 | JP H11‑004456 A | 1997‑06‑13 | 1999‑01‑06 | Fuji Photo Film Co. | Static image input device |
| 11 | JP H11‑187306 A | 1997‑12‑22 | 1999‑07‑09 | Sharp Corp. | Imaging device |
| 12 | JP H11‑355665 A | 1998‑06‑05 | 1999‑12‑24 | Fuji Photo Film Co. | Driving method of imaging device and electronic camera |
| 13 | US 6,195,125 B1 | 1995‑08‑11 (JP 7‑205888) | 2001‑02‑27 | Canon KK | Pixel shifting image sensor with a different number of images sensed in each mode |
| 14 | US 6,519,000 B1 | 1995‑06‑30 | 2003‑02‑11 | Canon KK | Image pickup apparatus with mode switching between a still picture mode and a moving picture mode |
| 15 | US 6,661,451 B1 | 1996‑11‑01 | 2003‑12‑09 | Olympus Optical Co. | Image pickup apparatus capable of performing both a still image process and a dynamic image process |
| 16 | US 6,765,616 B1 | 2000‑01‑11 | 2004‑07‑20 | Hitachi, Ltd. | Electric camera (the '729's own parent) |
| 17 | US 6,798,448 B1 | 1998‑07‑22 | 2004‑09‑28 | Sony Corporation | Imaging apparatus |
| 18 | US 6,906,746 B2 | 2000‑07‑11 | 2005‑06‑14 | Fuji Photo Film Co. | Image sensing system and method of controlling operation of same |
| 19 | US 6,970,191 B1 | 1998‑07‑22 | 2005‑11‑29 | Sony Corporation | Video camera apparatus |
| 20 | US 7,154,539 B1 | 1998‑12‑02 | 2006‑12‑26 | Hitachi, Ltd. | Image pickup device for still and motion images |
Two additional references are named in the specification's "Background of the Invention" (Sony JP‑A‑9‑270959 and Sharp JP‑A‑11‑187306). Note items 6 and 11 in the table above are the same disclosures; the specification discusses them by number and criticizes them. I treat them separately below because the specification itself frames them as the closest conventional art.
2. Reference-by-reference analysis
Tier 1 — Closest references (best § 102 / § 103 candidates against claim 1)
US 7,154,539 B1 — Hitachi, "Image pickup device for still and motion images" (filed 1998‑12‑02; granted 2006‑12‑26). § 102(e) art (filing predates 2000‑01‑11). Same assignee family as the '729 (Hitachi), and titled to the very subject matter of the patent — mode-dependent pixel readout for still vs. motion.
- Potential § 102 relevance: claim 1. A same-assignee Hitachi reference expressly directed to "still and motion images" is the most likely single reference to disclose the claim‑1 core (different effective pixel sets in still vs. motion modes, with a portion of the array used in motion). I could not retrieve its full text within this session (tool limit reached), so I flag this as the reference to pull first. If it also discloses a shake detector driving a readout-position shift, it is the strongest § 102(a)/(e) candidate against claim 1 and dependent claims 2/4. Confidence in the mapping: moderate; verify against full text.
US 6,978,191 B1 — Sony, "Video camera apparatus" (filed 1998‑07‑22; granted 2005‑11‑29). § 102(e) art. Companion to US 6,798,448 (same filing date/assignee).
- Potential § 102 relevance: claim 1 / claim 3. A "video camera apparatus" from Sony filed 1998 addressing still/motion operation is a candidate for the mode‑switching + different‑pixel‑set limitations. Full text not retrieved — same verification caveat as above. Likely § 103 art at minimum.
US 6,798,448 B1 — Sony, "Imaging apparatus" (filed 1998‑07‑22; granted 2004‑09‑28). § 102(e) art. Verified via search: claims a solid-state image sensor switchable between an interlaced read-out mode and an all-pixels read-out mode, with scan conversion of the all-pixels output into an interlaced signal, and a still-picture recording path.
- Potential § 102 relevance: claim 1, in part. It squarely discloses the "static recording uses all effective pixels" concept and a mode switch between a reduced-readout mode and an all-pixels mode — i.e., two of the three mode limbs of claim 1. It does not, on the retrieved text, disclose an image-instability detector or a shake-driven shift of the effective pixel set, nor a different view angle between still-monitor and video-record. Therefore it does not anticipate claim 1; it is strong § 103 art for the mode/pixel-set limitations when combined with a stabilization reference.
Tier 2 — Mode-switching / different-pixel-usage references (§ 103 art for the mode limbs)
US 6,519,000 B1 — Canon, "Image pickup apparatus with mode switching between a still picture mode and a moving picture mode" (filed 1995‑06‑30; granted 2003‑02‑11). § 102(e) art. Verified via search. In the still picture mode, one frame of data is output per field with no addition between charges of adjacent photoelectric conversion elements; in the moving picture mode, field data is produced by adding charges of two adjacent elements, with the addition combination interlaced between odd/even fields.
- Potential § 102 relevance: claim 1 (partial). Directly maps to the "static recording … all effective pixels" limb (no addition = full pixel readout) and the "moving video … portion of the array" limb (two-pixel addition reduces the effective set). It does not disclose the image-instability detector or the different-view-angle limitation. § 103 art, not § 102 anticipation of claim 1.
US 6,661,451 B1 — Olympus, "Image pickup apparatus capable of performing both a still image process and a dynamic image process" (filed 1996‑11‑01; granted 2003‑12‑09). § 102(e) art. Verified via search. Normally drives the CCD in a high-speed mode that reads one line every three lines (vertical culling) to display motion at ~60 fps, and switches to a high-quality image mode only upon trigger depression, reading all pixels.
- Potential § 102 relevance: claim 1 (partial). Maps well to "monitoring uses a reduced effective set for motion-display purposes" and "recording uses all pixels," and its "switch reading mode in accordance with trigger operation" (Figs. 14–15) is close to the claim‑3 method's operation-selection language. Again lacks the shake-detector/window-shift element. § 103 art.
US 5,734,424 A — Canon, "Image pickup apparatus capable of providing moving video signal and still video signal" (filed 1990‑08‑08; granted 1998‑03‑31). § 102(b) art (published before 2000). Companion family: US 6,304,293 and US 6,509,000 cite into the same lineage. Discloses a single camera producing both a moving video signal and a still video signal, with mode-dependent readout.
- Potential § 102 relevance: claim 1 (partial) / claim 3. Relevant to the "provides both a moving-video mode and a still-image mode" architecture. Insufficient alone for the stabilization/view-angle limitations.
US 6,195,125 B1 — Canon, "Pixel shifting image sensor with a different number of images sensed in each mode" (filed 1996‑08‑07, JP priority 1995‑08‑11; granted 2001‑02‑27). § 102(e) art. Verified via search: multiple image-sensing modes, each using a different number of pixel-shift operations and producing different resolution, selected by a mode switch.
- Potential § 102 relevance: claim 1 (partial). Supports the notion of mode-dependent image formation/resolution on a single sensor, but its mechanism is pixel-shifting (piezoelectric/LPF), not mode-dependent effective-pixel readout or stabilization. Weak § 103 art.
US 6,906,746 B2 — Fuji Photo Film, "Image sensing system and method of controlling operation of same" (recorded priority 2000‑07‑11; granted 2005‑06‑14). Date caution: the priority date shown (2000‑07‑11) is after the '729 critical date (2000‑01‑11), so on the face of the record this reference may not be § 102 prior art at all; it appears as an examiner/distributed citation or reflects a later-originating application. Verify the actual earliest effective filing (JP priority) before relying on it.
- Potential § 102 relevance: nominal only — an image-sensing system operable for still and moving operation. Treat as non-prior-art unless a pre-2000 priority is confirmed.
US 5,287,192 A — Sony, "Solid-state imager for use with two different TV systems" (filed 1991‑07‑15; granted 1994‑02‑15). § 102(b) art.
- Potential § 102 relevance: This reference concerns vertical mixing/culling to match different television systems' effective line counts — i.e., it is far more relevant to the parent '616/'493 claims (pixel mixing/culling to match M effective scanning lines) than to the '729's view-angle/stabilization claim set. For the '729, it is background § 103 art only.
Tier 3 — Component/background references (support the sensor/color/processing limbs, not the mode or stabilization limbs)
- US 5,187,569 A — Asahi Kogaku, "Solid state imaging device and electronic still camera using same" (1989‑03‑03 / 1993‑02‑16). § 102(b). Solid-state imager + electronic still camera background; relevant to the grid-array sensor and color-filter architecture. § 103/background; not anticipatory of claim 1.
- US 5,847,758 A — Sony, "Color CCD solid-state image pickup device" (1995‑08‑11 / 1998‑12‑08). § 102(b). Color CCD architecture (complementary-color/vertical-stripe), mapping to the specification's Ye/G/Cy color-filter discussion. Background/§ 103 on the color-signal-generation aspects only.
- US 5,170,249 A — Hitachi, "Digital signal processing apparatus having devices for delaying and combining color signals" (1989‑04‑21 / 1992‑12‑08). § 102(b). Color-signal delay/combine processing. Background.
- JP H04‑323973 A — Hitachi, "Picture input device" (1991‑04‑23 / 1992‑11‑13). § 102(a)/(b). Picture-input architecture. Background.
- US 5,828,406 A — Eastman Kodak, "Electronic camera having a processor for mapping image pixel signals into color display pixels" (1994‑12‑30 / 1998‑10‑27). § 102(b). Color-signal-to-display mapping; relates to the "display unit" limb generally, but no mode/view-angle/stabilization teaching. Background.
- US 4,054,915 A — The General Corporation, "Color television camera" (1974‑09‑05 / 1977‑10‑18). § 102(b). Foundational color-TV camera. Background only.
- JP H11‑004456 A — Fuji Photo Film, "Static image input device" (1997‑06‑13 / 1999‑01‑06). § 102(a)/(b). Still-image input; potentially relevant to the static-image mode generally. § 103 on the still-mode limb only.
- JP H11‑355665 A — Fuji Photo Film, "Driving method of imaging device and electronic camera" (1998‑06‑05 / 1999‑12‑24). § 102(a)/(b). Imaging-device driving method for an electronic camera. § 103 on the drive/readout limb.
Family self-citation
US 6,765,616 B1 — Hitachi, "Electric camera" (priority 2000‑01‑11; granted 2004‑07‑20). This is the '729's own ancestral application (the '729 is a continuation of the '616 line via Ser. Nos. 12/845,266 and 10/660,710). It is not § 102 prior art by "another" under § 102(a)/(e) and cannot anticipate its own continuation. Listed here only to explain why it appears in the citation record.
3. The two references the specification itself treats as the closest conventional art
These are called out in the "Background of the Invention" and are the most important for the stated problem the '729 solves:
JP‑A‑9‑270959 (Sony) — "Digital electronic imaging device, imaging system, and imaging method" (pub. 1997‑10‑14). § 102(b) art (published pre‑2000). As described in the '729's own background: it "mixes together or culls the pixel signals inside the image sensing device to reduce the number of signals to be read and therefore the read cycle."
- Potential § 102 relevance: closest to the parent patents' claims (in-sensor mixing/culling to reduce read cycle), and thus § 103 art for the mixing/culling limbs. For the '729 specifically it is background; note the specification criticizes it as still requiring field memory and a special sensor structure.
JP‑A‑11‑187306 (Sharp) — "Imaging device" (pub. 1999‑07‑09). § 102(b) art. As described by the '729: "signals from all the effective pixels are read out taking two or more times the field period … stored in a memory means such as a field memory, and then subjected to interpolation processing for transformation into signals conforming to the field cycle."
- Potential § 102 relevance: § 102/§ 103 art against the "generate television signals from all effective pixels during still-image monitoring" concept — it is the reference the '729 explicitly positions itself against. The '729's asserted novelty over it is doing this without field memory by in-sensor mixing during the vertical blanking period. Because the '729 claims are now drafted around mode/view-angle/stabilization rather than field-memory avoidance, '187306 is § 103 art for the monitoring limb, not an anticipatory reference for claim 1.
4. Bottom line
- No single reference on the face of the '729 anticipates claim 1 as a whole. The claim's combination of (i) an image-instability detector, (ii) a different view angle between static-monitor and video-record, and (iii) a shake-driven shift of the effective pixel set is not met by any one of the 20 cited items as disclosed.
- Best § 102 candidates to verify first (full text required): US 7,154,539 B1 (Hitachi) and US 6,970,191 B1 / US 6,798,448 B1 (Sony, filed 1998‑07‑22). These are the only cited references filed before the critical date that plausibly reach both the mode-dependent pixel-set limb and (for '539) a still/motion/positional aspect.
- Strongest § 103 combination art for the mode limbs: US 6,519,000 (Canon), US 6,661,451 (Olympus), US 5,734,424 (Canon), US 6,798,448 (Sony), US 6,195,125 (Canon).
- Background/component art (sensor, color filters, signal processing, display): US 4,054,915; US 5,170,249; US 5,187,569; US 5,287,192; US 5,828,406; US 5,847,758; JP H04‑323973; JP H11‑004456; JP H11‑355665.
- Date caution: US 6,906,746 B2 shows a priority date (2000‑07‑11) after the '729 critical date and should be treated as non-prior-art unless a pre‑2000 effective filing is confirmed.
- Not prior art: US 6,765,616 B1 is the '729's own parent and cannot anticipate it.
- Reality check on the litigation record: When this patent was actually challenged (IPR2025‑00444, LG v. Maxell), the petitioner did not rely on this prosecution citation list; it built grounds on Misawa '482, Parulski '218, Kawahara '361, and Tomita '881 in combination (and the IPR terminated by settlement pre‑institution). That is consistent with the conclusion above: the '729's citation list is § 103 combination material, not a set of clean anticipatory references.
Reliability caveats: The bibliographic entries and dates in Section 1 are taken verbatim from the patent's own citation record (authoritative). The characterizations of US 6,519,000, US 6,661,451, US 6,195,125, and US 6,798,448 are grounded in the full/near-full texts retrieved above. The characterizations of US 7,154,539, US 6,970,191, US 5,734,424, US 6,906,746, and the JP patents are based on titles/abstracts and the specification's own discussion, because I reached the tool‑call limit before retrieving their full texts — those mappings should be verified against the complete documents before being relied upon.
Generated 9/28/2026, 6:25:12 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
Extensions
Patent term adjustments, term extensions, continuations, divisionals, family members, and expiration dates.
Derivative works
Defensive disclosure: derivative variations of each claim designed to render future incremental improvements obvious or non-novel.
Keep exploring
More patents asserted by Maxell, Ltd.
- US 10812646US patent 10812646, titled "Portable terminal apparatus," was issued to Maxell Ltd. The inventors are Nobuo Masuoka and Yasunobu Hashimoto. The patent was filed on September 19, 2019, and issued on October 20, 2020. The abstract states: "A…
- US 10783228US patent 10783228, titled "Information processing device, application software start-up system, and application software start-up method," was filed on August 8, 2019, and issued on September 22, 2020. The current assignee is Maxell Ltd…
- US 7952645Concise Summary of US Patent 7952645 Title: Video processing apparatus and mobile terminal apparatus Assignee: Maxell Ltd (Current Assignee, as of 2018-01-25 reassignment) (Previously Hitachi Ltd and Hitachi Maxell, Ltd.) Inventors: Kozo…
- US 9304654I'll research US Patent 9,304,654 across the USPTO and related sources. Let me run several searches in parallel. I have strong initial results. Let me dig deeper into the full claims and abstract, plus verify the CAFC docket details. US…
- US 9696868I'll search for information on US patent 9696868 from multiple authoritative sources, including the USPTO and CAFC dockets. I have good initial results. Now let me dig deeper into the actual claims of US9696868 and the specific CAFC docket…
- US 8170394I'll search for current information on this patent and check for any 2026 litigation activity. Let me check for CAFC 2026 docket activity and the reissue status. Let me verify whether there's any 2026 Federal Circuit activity specifically…
- US 8549109
- US 10958971
Other patents in Media & Broadcasting (T)
- US 10199072I'll search for litigation/docket information on this specific patent, then summarize from the authoritative full text provided. Let me check for the specific district court litigation and any Federal Circuit appeal. Let me verify whether…
- US 9818449I'll search for authoritative information on this patent number, including any 2026 CAFC docket activity. Let me check for the district court case and any Federal Circuit 2026 appeal activity. US Patent 9,818,449 B2 — Summary Identifier…
- US 7421188I'll search for authoritative records on this patent, including any 2026 appellate docket activity. Let me check the litigation/appellate posture and confirm the enforcement history. Let me do one final check for any 2026 appellate…
- US 6856760I'll search for authoritative information on US patent 6856760. Let me verify the full claim set and check for any 2026 CAFC activity. US Patent 6,856,760 B2 — "Recording medium" Important scoping note: I searched for the literal…
- US 10084991I'll run a few targeted searches for this specific patent number, then summarize from the authoritative full text I already have. US Patent 10,084,991 — Analyst Summary Date of this report: I searched for this exact patent number only (no…
- US 7995897I'll search for authoritative information on US 7995897, including any 2026 CAFC activity. Let me verify whether any 2026 Federal Circuit appeal involves this specific patent, and confirm the bibliographic record. Let me try to confirm the…
- US 6816491I'll search for current information on this patent, then summarize. US Patent 6,816,491 B1 — Summary Ground truth note: I verified this against the authoritative full text you provided (Google Patents, fetched 2026-09-28) and corroborating…
- US 9190014I'll search for this specific patent number across the sources you named. Let me check for litigation, PTAB, and CAFC activity specifically tied to this patent number. Let me run a few more targeted checks on litigation/docket activity and…
This patent in court (5)
5 tracked lawsuits name US 8736729.