Mayer Brown secures patent victory for Maxell before USPTO Director
Mayer Brown secured a significant victory for Maxell, Ltd. when the Director of the US Patent and Trademark Office reversed portions of two Patent Trial and Appeal Board (PTAB) decisions that had invalidated claims in Maxell patents challenged by Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
The Director concluded that Samsung had not demonstrated that the prior-art references it relied upon disclosed a required method for processing wireless signals. In reaching that decision, the Director found that a key technical specification cited by Samsung had already been determined not to qualify as prior art, and that the remaining evidence failed to establish the missing claim limitation.
As a result, claim 15 of US Patent No. 11,445,241 and claim 21 of US Patent No. 10,129,590 remain valid.
The decision is notable because the Director adopted the reasoning of the dissenting PTAB judge and rejected the majority's reliance on evidence developed during the proceeding to support findings that were not adequately presented in Samsung's original petitions. The ruling reinforces the requirement that petitioners establish their invalidity grounds in the petition itself rather than through evidence and arguments developed later in the proceeding.
The Mayer Brown IP litigation team representing Maxell, Ltd. was led by partners Robert Pluta, Saqib Siddiqui, and Amanda Bonner, and associate So Ra Ko in the firm’s Chicago and Washington DC offices.
The case is Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. v. Maxell, Ltd.
