Maxell, Ltd.’s active use of the International Trade Commission (ITC) continues, with a new complaint filed against TCL (337-TA-3769) over the provision of smart TVs, including certain TCL 6-Series, 5-Series, 4-Series, 3-Series, S-Class, Q-Class, and QD-Mini LED models. Four video playback patents are asserted, Maxell naming as proposed respondents various TCL subsidiaries. Past ITC actions, e.g., against Apple, Lenovo (Motorola Mobility), and VIZIO, were terminated in light of settlements. Litigation in this campaign is active before the Northern District of California, against LG Electronics (LGE), and before the Eastern District of Texas, against Samsung.

The Federal Circuit has overturned the invalidation of a Maxell patent asserted against battery manufacturer Amperex Technology. On March 6, the appellate court issued a precedential opinion in which it held that Western District of Texas Judge Alan D. Albright erred by concluding that certain claim limitations were both optional and required, a “contradiction” that rendered the patent indefinite. This conclusion was “inapt”, the Federal Circuit countered—ruling instead that there was no contradiction under a proper reading of the claims. Despite that decision, all four patents-in-suit remain invalid as a result of inter partes reviews (IPRs) for which appeals are currently active before the Federal Circuit.

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.

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.