Maxell’s $112M Verdict Against Samsung Falls in Posttrial Challenge

Eastern District of Texas Judge Robert W. Schroeder, III has toppled a $112M verdict against Samsung from May 2025 in litigation from Maxell, granting judgment as a matter of law (JMOL) for the defendant. Though the court’s reasoning was filed under seal, the accompanying order indicates that Samsung prevailed on several key aspects of its post-trial challenge—the court granting JMOL of noninfringement for all three tried patents and for invalidity as to two of those patents.

Maxell filed this case, its first action against Samsung, in the Eastern District of Texas in September 2023 (5:23-cv-00092), alleging the infringement of seven patents (8,073,161; 8,982,086; 10,129,590; 10,176,848; 11,017,815; 11,223,757; 11,445,241) through the provision of a wide array of devices, ranging from home appliances to mobile devices, with features such as Samsung’s SmartThings, Samsung Pay, and Samsung Quick Share tools; the Bixby voice assistant platform; fingerprint unlocking; and various mobile apps at issue. The plaintiff then filed an action against Samsung before the International Trade Commission (ITC) in December 2024 (337-TA-1432), asserting the ‘241 patent and five others (8,130,280; 11,490,004; 11,509,953; 11,750,915; 12,108,103) against Samsung smartphones with multiple cameras and/or a wide array of features related to image and video capture and processing, wireless networking and data transfer, software updates, Samsung Pay, and display mirroring, among others.

In January 2025, Samsung filed a motion to partially stay the district court case pending the resolution of the ITC action with respect to two patents: the ’241 patent, at issue in both proceedings; and the ’590 patent, of which the ’241 patent is a continuation. While the ’590 patent is not at issue in the ITC proceeding, Samsung argued that the case should also be stayed as to that patent—either on a mandatory basis (as also asserted for the ’241 patent) or under the court’s discretionary power—because the two patents “share an identical specification and nearly identical claims”.

In a March 2025 order, Magistrate Judge J. Boone Baxter granted the motion as to the ’241 patent (which Maxell had not opposed) but not as to the ’590 patent, agreeing with Samsung that the scope of the asserted claims from the two patents is not materially different, but concluding in part that the defendant had not shown the cases would involve the same infringement theories (given that the ITC action involves a newer accused product that operates differently with respect to the targeted Bluetooth file sharing functionality) or validity issues (as prior art had “not yet been elected in the ITC action”). The court then severed the claims over the ’241 patent into a new action (5:25-cv-00034).

The following month, Maxell then filed a second district court case against Samsung (5:25-cv-00052), targeting a wide array of products, ranging from smartphones to smart home hubs; and an equally wide array of features, such as support for various camera modes, photo grouping, certain media streaming apps (e.g., Netflix and Samsung TV), the SmartThings Network system, and visual display signal processing. The complaint asserts ten additional patents (7,577,417; 7,952,645; 8,180,198; 8,471,950; 10,783,228; 10,812,646; 11,026,088; 11,277,650; 11,812,091; 12,160,681) not at issue in either of the other Samsung proceedings (though the ‘417 and ‘645 patents were also at issue in prior litigation between Maxell and Lenovo (Motorola Mobility)). Samsung answered that complaint in August, with the court soon after rejecting Maxell’s request to increase the number of claims it can assert in its preliminary election.

Meanwhile, the scope of the planned trial in the -92 case narrowed further in the weeks before that trial’s May 19, 2025 start date. On April 22, per a joint pretrial order, Maxell committed to narrow the case from “18 asserted claims to no more than 10 asserted claims (and likely to 8 or 9 asserted claims)”, the selection of which would be based in part on the court’s orders on pending motions. Then, in a May 2, 2025 order, Judge Schroeder granted Samsung’s motion for summary judgment of noninfringement for the ‘590 patent, and partially granted summary judgment of noninfringement for Samsung with respect to a subset of the claim limitations at issue from the ‘757 patent. Maxell then notified the court that it would seek to try just claims 1, 21, and 24 of the ‘815 patent; claim 1 of the ‘086 patent; claim 6 of the ‘161 patent; and claims 11 and 12 of the ‘848 patent. After the court ordered Maxell to narrow its case even further, from four patents to three, Maxell dropped claim 6 of the ‘161 patent. (In July, Judge Gilstrap then granted the plaintiff’s motion to sever its claims over that patent into a separate action (5:25-cv-00097).) Per the plaintiff, as a result of this “ordered narrowing”, Samsung appliances would no longer be at issue, with the trial to focus solely on Galaxy smartphones and tablets.

The narrowed case then went to trial as scheduled. On May 28, 2025, the seventh day of trial, a jury returned a verdict finding that Samsung had infringed the tried claims from the ’086, ’848, and ’815 patents; that its infringement had been willful; and that Samsung had not shown either the ’086 or ’815 patents are invalid. The jury awarded a total of roughly $112M in damages—including around $38.1M for the ’086 patent, $28.2M for the ’848 patent, and $45.4M for the ’815 patent—indicating that this amount was based on a 1% “running royalty for each patent through trial”.

Among the issues left for the court to decide after that jury trial was Samsung’s defense of prosecution laches. As summarized by Samsung in its bench trial brief on that issue, the company argued that the asserted claims from the ‘815 patent are unenforceable because “Maxell unreasonably and inexcusably delayed for more than a decade—and in some cases, 15 years—from the filing of the earliest priority applications before submitting key claim limitations for examination to the United States Patent Office”, during which time Samsung allegedly suffered prejudice by having “developed and commercialized relevant technologies during the intervening period of the delay”. Prior to ruling on other pending dispositive motions, the court continued the bench trial until further notice. The ITC has in the meantime addressed the same issue: On September 2, Administrative Law Judge Cameron Elliot issued an initial determination that partly granted Maxell’s request for summary determination on Samsung’s prosecution laches defense, and on its collateral estoppel defense related to the district court ruling granting summary judgment of noninfringement for the ‘590 patent.

On July 15, Samsung filed a motion for JMOL and for a new trial on a host of issues. Judge Schroeder largely granted that motion in his September 18 order, which as noted above left the court’s explanation of its reasoning to a sealed order not yet released in redacted form.

In part, the court granted JMOL of noninfringement for each of the three tried patents. On that point, Samsung argued in its motion that for the ‘086 patent, the accused Galaxy S23 smartphone’s allegedly infringing fingerprint registration functionality lacked two “registering modes” as required by two key claim limitations, and that the accused feature also lacks “a registering mode for inputting information by ‘an end of the finger’”.

As for the ’815 patent, Samsung argued that the S23’s targeted Samsung Gallery app does not meet a key limitation requiring a certain type of “Character Selection”, nor does the accused Netflix app: It observed that the court had construed a “character” as a “a letter, number, punctuation mark, or other symbol or control code that is represented to a computer by one unit of information”, contending that as a result, the limitation was not met by the targeted Gallery functionality for merely selecting an area of the display. That argument was further supported, per Samsung, by its expert’s testimony on the Gallery app’s underlying source code. Nor, Samsung continued, did the “Miyagi-Do Karate icon” highlighted from the Netflix app constitute a “character” as required for infringement. Samsung further alleged that Maxell had been wrong to introduce an additional infringement theory (one attempting to satisfy that same limitation through the display of the text “Continue Watching” on the Netflix app’s home screen) for the first time during cross-examination of Samsung’s expert.

With respect to the ‘848 patent, Samsung argued that the asserted claims require both that newly captured photos of a person are used to register that person in the claimed face detection system (a “first setting mode”) and that saved photos of a person are used for registration (a “second setting mode”)—whereas, per the defendant, the accused products only contain the latter functionality.

Judge Schroeder additionally granted Samsung’s request for JMOL of invalidity for the ’086 and ’815 patents. Samsung had argued that claim 1 of the ’086 patent is invalid for lack of a written description under 35 USC § 112. The defendant further asserted that the tried claims of the ’815 patent are rendered obvious by certain prior art systems that it had shown were in public use before the relevant dates, with claim 1 allegedly rendered obvious by the Apple iPhone 8; and claims 21 and 24, by the Galaxy S10 and the Netflix app.

Moreover, Judge Schroeder conditionally granted Samsung’s request for a new trial on invalidity, though it declined to do so for infringement. The court also carried its rulings on Samsung’s requests for JMOL on damages and willfulness pending the resolution of a potential appeal. Lastly, Judge Schroder indicated that “Samsung’s prosecution laches defense may also be moot in light of the Court’s rulings on Samsung’s JMOL”, along with a corresponding Maxell motion to strike, and gave the parties seven days to “file a joint status report regarding whether Samsung still needs to be heard on its prosecution laches defense, whether it is moot, or whether the defense is withdrawn”.

More on Maxell’s litigation can be found in prior RPX coverage, including the Samsung ITC action (see “With ITC Complaint, Maxell Doubles Number of Patents-in-Suit Against Samsung” (December 2024)) and cases against other defendants (see, e.g., “Maxell Files ITC Action Against TCL” (August 2024) and “West Texas Maxell-Lenovo Litigation Touches on Alternative Service, Proper Venue, Personal Jurisdiction over Foreign Defendants” (April 2022)).