Maxell, Ltd. v. ASUSTeK Computer Inc., et al. DC

Last week, RPX covered a wide range of issues arising from the expanding litigation between plaintiff Maxell and defendant Lenovo (Motorola Mobility), which began with a November 2021 complaint filed in the Western District of Texas, followed by Motorola Mobility’s declaratory judgment action filed in the Northern District of Illinois. The most recent expansion included a second West Texas complaint, which Maxell filed on March 30, but the next day it became clear that the expansion was multifront.  

Last November, Maxell sued Lenovo (Motorola Mobility) in the Western District of Texas. While threshold disputes in that case ramped up—over jurisdiction and venue as to both Motorola Mobility and a US Lenovo subsidiary and over service as to the ultimate Lenovo parent (a Chinese entity)—(1) Motorola Mobility, alone, filed a declaratory judgment action in the Northern District of Illinois over the eight Maxell patents at issue in West Texas, (2) Maxell amended its West Texas complaint to swap out one of those patents, and (3) Motorola Mobility amended its own complaint to match. Now, Maxell has hit the same three entities (the Chinese Lenovo parent, the US Lenovo sub, and Motorola Mobility) in a second original complaint (6:22-cv-00334), this one reasserting the swapped out patent, together with five new ones, back in the Western District of Texas. Needless to say, this dispute is expanding.

Roughly six months after its litigation with Apple came to an end, Maxell has sued Lenovo (Motorola Mobility) (6:21-cv-01169) in the same campaign, asserting eight patents in the new Western District of Texas complaint, several of them for the first time. Maxell targets the defendants’ provision of Motorola-branded smartphones with features related to image and video capture and processing, “Portrait” mode and document scanning, video streaming, audio playback, and location services.

Maxell has filed another lawsuit against Apple (6:21-cv-00158) in the Western District of Texas over its “‘smartphone’ patent portfolio”. In the new complaint, Maxell asserts 12 patents, nine of them litigated for the first time, bringing the total at issue in this campaign, which began back in November 2016, to more than five dozen. An Eastern District of Texas trial in a prior Maxell suit is also scheduled to begin on March 22, with each party filing an opposed motion—one concerning trial timing; the other, the fate of patents not selected for trial—both citing, at least in part, the current COVID-19 pandemic, a circumstance that Maxell concedes is “anything but normal”.

The Federal Circuit’s February 2018 opinions in Berkheimer and Aatrix have caused a significant shift in the way that district courts approach Section 101. By holding that factual disputes over a patent’s inventiveness may preclude early dismissal under Alice, those decisions have since caused grant rates for patent eligibility challenges to drop by more than 20%, as detailed in a recent RPX report. Berkheimer’s elevation of subsidiary factual questions in the Section 101 analysis—historically viewed as primarily a question of law—has also raised questions about the factfinding role juries will play in the adjudication of Alice challenges not resolved until trial. Now, an eligibility dispute just resolved by District Judge Rodney Gilstrap confirms that courts may be willing to entrust juries with 101-related factual issues after all. On September 12, shortly after denying summary judgment under Alice due to a factual dispute under Berkheimer, Judge Gilstrap put that dispute before a jury, which found that the challenged claims were “well-understood, routine, and conventional”, as argued by defendant Jack Henry. The following day, Judge Gilstrap issued a final judgment against plaintiff PPS Data LLC in which he invalidated the claims under Alice in light of that verdict.

On the heels of recent settlements with ASUSTek, Huawei, and ZTE, Maxell has sued Apple for alleged patent infringement (5:19-cv-00036). Maxell’s March 15 complaint, filed in the Eastern District of Texas, accuses various Apple devices of infringing ten patents, including patents previously asserted by Maxell against ASUSTek, BlackBerry, Huawei, and/or ZTE. The patents asserted against Apple also include several that were at issue in a June 2018 trial against ZTE, which culminated in a $43.3M damages award.