ZTE to pay Maxell $43m for infringing smartphone patents

Chinese telecoms company ZTE and its subsidiary ZTE USA have been ordered to pay electronics company Maxell $43.3 million for infringing seven patents incorporating smartphone and tablet technology.

A jury at the US District Court for the Eastern District of Texas Texarkana Division awarded Maxell the damages on Friday, June 29.

The case involves eight patents owned by Maxell, a subsidiary of Japanese conglomerate Hitachi. The company sued ZTE for patent infringement at the district court in November 2016. 

The patents in question are US numbers 5,396,443; 6,748,317; 8,339,493; 8,736,729; 6,408,193; 6,329,794; 6,816,491; and 8,098,695. They relate to wireless flash drives, multimedia devices, and storage and memory devices in mobile phones and tablets.

“As a mobile technology developer and industry leader, and due to its historical and continuous investment in research and development, Hitachi Maxell owns a portfolio of patents related to such technologies and actively enforces its patents through licensing and/or litigation,” said the claim.

Maxell alleged that it first informed ZTE of its infringing activity in 2013 through numerous meetings with its representatives. It claimed the companies were engaged in conversation for the following three years, with Maxell believing that a “business transaction between the parties would be mutually beneficial”.

However, the claim said that ZTE did not want to enter into an agreement with Maxell or to license patents from the company.

Maxell requested damages and permanent injunctions enjoining ZTE from further acts of infringement.

The jury ruled that Maxell was successful in proving that ZTE had infringed seven of the patents, although it did not give a ruling on the ‘443 patent.

Maxell’s trial team was led by US-based Mayer Brown lawyers Jamie Beaber, Alan Grimaldi, Kfir Levy and Tripp Fussell, alongside local counsel Geoff Culberston.

Beaber told WIPR “we are happy we were able to underscore the significance and value of the inventions within Maxell’s portfolio”.

“The jury absolutely got this one correct.”