Filed with the ITC in December Last Year for Six Patent Infringements
Maxell: "Samsung Refused a Fair License Agreement"
Likely to Affect the Texas Court Trial as Well
Samsung Electronics has been sued by Japan's Maxell (formerly Hitachi) on allegations of selling smartphones and tablet PCs made using its patented technology without authorization in the United States. Before a ruling is made in the patent infringement lawsuit that began in September 2023 at the U.S. Eastern District Court of Texas following Maxell's filing, the two companies are set to engage in another legal dispute at the U.S. International Trade Commission (ITC).
According to the ITC on the 20th, Maxell filed a patent infringement lawsuit against Samsung Electronics and its U.S. subsidiary on December 17 last year under Section 337 of the U.S. Tariff Act. Based on this, the ITC initiated an investigation on January 23 this year.
According to the complaint, Maxell claims infringement of a total of six patents primarily related to smartphone, camera, and video processing device technologies for shooting, transmission, and connection. These include image synthesis, auto-focus and white balance adjustment, GPS tagging, wireless data transmission, and remote control functions.
Maxell requested an exclusion order to block the import of Samsung products into the U.S., arguing that the impact on the U.S. market would be limited. They stated that since there are sufficient substitutes in the U.S. smartphone market such as Apple and Motorola, the effect on the public interest would not be significant.
The legal dispute is expected to be prolonged. Samsung argues that since an inter partes review (IPR) procedure is underway at the U.S. Patent Trial and Appeal Board (PTAB) regarding the information processing device-related patent (No. 11445241), the ITC should postpone its investigation of this patent. The PTAB's final decision is expected by December 11 this year.
This issue is important because the ITC's ruling could influence the ongoing patent infringement lawsuit between the two companies in the Eastern District Court of Texas. According to Bloomberg, Samsung has requested the Texas federal judge to partially stay the lawsuit until the ITC investigation results are released, as the patent under ITC investigation (11445241) is a continuation patent of the one currently sued in court (10129590), sharing the same issues.
Samsung also conveyed through the complaint that a U.S. import ban on its products would seriously harm the public interest. Currently, Samsung is the second-largest player in the U.S. smartphone market and ranks third in tablet PC market share. Its share reaches 53% for Android smartphones. Samsung cited its Austin, Texas manufacturing plant to argue the potential damage to U.S. manufacturing.
In response to Asia Economy's email inquiry, Maxell stated, "We have long strived to establish a smooth and fair licensing agreement with Samsung," adding, "While industry competitors have entered into fair patent licenses with Maxell, Samsung has not responded." Samsung Electronics said, "Since the case is ongoing, we cannot disclose any information." Maxell's legal representative is Mayer Brown, while Samsung is represented by DLA Piper. DLA Piper has previously represented Samsung in lawsuits related to mobile communication networks.
Meanwhile, it is believed that Maxell chose the ITC, an administrative litigation body rather than a court, primarily for the purpose of swift pressure. ITC investigations typically conclude within 12 to 16 months. If patent infringement is recognized, import and sales bans in the U.S. can be requested.
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