Context: Samsung Display first sued Chinese rival BOE Technology in December 2022 in the United States International Trade Commission (USITC, or just ITC) for infringing four patents related to active matrix organic light-emitting diode (OLED) display panels and modules for mobile devices. The companies have also been embroiled in parallel patent and trade secrets disputes in the Eastern District of Texas and the ITC, respectively. Last month, we reported that Samsung Display lost its request for an import ban because it failed to prove that it has significant R&D or economic investment activities in the U.S. with respect to the patents-in-suit (March 25, 2025 ip fray article). In that same report, we highlighted that Samsung Electronics (its parent company) has historically remained passive in its patent enforcement strategy, preferring to defend its assets through a countersuit, but Samsung Display appears to be more of a proactive patent enforcer.
What’s new: Samsung Display yesterday filed a fresh complaint against BOE for infringing four of its OLED display-related patents in the Eastern District of Texas Marshall division. Meanwhile, on the same day, Japanese consumer electronics giant Maxell sued Samsung Electronics for infringing 10 patents related to its communications devices in the Eastern District of Texas Texarkana division. Maxell is further seeking preliminary and permanent injunctions.
Direct impact and wider ramifications: Maxell’s suit against Samsung Electronics is part of a wider campaign that the company started in 2023 in the same court. It has since filed suits in Japan and the Unified Patent Court (UPC), too. It may not be long before we see a countersuit from Samsung Electronics, which has started to use brute-force techniques in other patent infringement lawsuits, notably its parallel antitrust/contract lawsuits against ZTE in the U.S., UK, and Germany (March 3, 2025 ip fray article).
Tokyo-based Maxell is best known for its information storage media products, including magnetic tapes, optical discs, and battery products such as lithium-ion rechargeable micro batteries and alkaline dry batteries. In 2013, Hitachi Consumer Electronics Co., Ltd., transferred its consumer electronics division – and its related patents – to Hitachi Maxell, Ltd.. Four years later, and to align its IP with its business development and licensing efforts, Hitachi Maxell changed its name to Maxell. Today, Maxell owns a portfolio of patents related to such technologies and actively enforces its patents through licensing and/or litigation.
This is Maxell’s suit:
The patents-in-suit in Maxell’s complaint include:
- U.S. Patent No. 11,026,088 (“Communication system, communication device and communication terminal device”)
- U.S. Patent No. 11,277,65 (“Sound-reproducer”)
- U.S. Patent No. 7,577,417 (“Apparatus and method for testing wheels, bearings and lubricants”)
- U.S. Patent No. 8,180,198 (“Playlist creating apparatus and method, and dubbing list creating apparatus and method”)
- U.S. Patent No. 11,812,091 (“Multimedia player displaying operation panel depending on contents”)
- U.S. Patent No. 7,952,645 (“Video processing apparatus and mobile terminal apparatus”)
- U.S. Patent No. 8,471,950 (“Signal processor for adjusting image quality of an input picture signal”)
- U.S. Patent No. 10,783,228 (“Information processing device, application software start-up system, and application software start-up method”)
- U.S. Patent No. 10,812,646 (“Method for the detection of schizophrenia related gene transcripts in blood”)
- U.S. Patent No. 12,160,681 (“Porous materials and process for their production”)
The complainant claims that Samsung has been aware of Maxell’s patent for well over a decade. In 2011, Samsung entered into a patent licensing agreement with Hitachi, which also involved Samsung acquiring 10 of Hitachi’s patent families. Some of those patents were then asserted against Apple. But since the expiration of that patent license, Samsung has refused to take a new license, Maxell alleges.
The company has already filed one patent infringement complaint against Samsung Electronics in the Eastern District of Texas, as well as three separate UPC actions in Germany, and four separate actions in Tokyo District Courts.
This is Samsung Display’s complaint:
The patents-in-suit in Samsung Display’s complaint include:
- U.S. Patent No. 9,299,730 (“Thin film transistor array substrate and organic light-emitting diode display”)
- U.S. Patent No. 10,541,279 (“Apparatus and method for inspecting thin film transistor active matrix substrate”)
- U.S. Patent No. 11,500,496 (“Method and apparatus for angular-resolved spectroscopic lithography characterization”)
- U.S. Patent No. 11,626,066 (“Pixel arrangement structure for organic light emitting diode display”)
The company alleges that it sent BOE a letter notifying it that its OLED displays infringed Samsung Display’s patents in May 2022 – and that those same patents have long been listed on its website (Samsung Display patent list). The products it claims infringing its patents include several of BOE’s smartphones, tablets and mobile devices, including the Nubia Z60 Ultra and REDMAGIC 9S Pro. Samsung Display adds that BOE has imported its products into the U.S. and promoted them at industry and trade shows such as The Society for Information Display’s DisplayWeek events in at least 2018, 2019, 2022, 2023, and 2024.
In Samsung Display’s parallel trade secret lawsuit against BOE in the ITC, the Administrative Law Judge is due to issue a decision on May 1, 2025. A final ITC decision will then be published four months later. The company’s parallel patent infringement lawsuit in the Eastern District of Texas (filed in December 2023) is still pending. Meanwhile, BOE and three other manufacturers, Shenzhen China Star Optoelectronics Technology Co., Ltd., Tianma Microelectronics and Visionox, filed an invalidation request against one of Samsung Display’s asserted patents in June 2023.
Counsel
In its complaint against BOE, Samsung Display is being represented by Amanda A. Abraham at Roth & Abraham Law Firm, as well as a team at Covington & Burling LLP: Jeffrey H. Lerner, Jared R. Frisch, Daniel W. Cho, Kee Young Lee, Robert T. Haslam, Scott A. Schrader, Jesse Y. Chang, and Sean Hong.
Meanwhile, in its complaint against Samsung Electronics, Maxell is being represented by Geoff Culbertson and Kelly Tidwell at Patton Tidwell & Culbertson LLP, as well as a team at Mayer Brown LLP: Jamie B. Beaber, Kfir B. Levy, Alan Grimaldi, James A. Fussell, III, Tiffany A. Miller, Saqib J. Siddiqui, Bryan C. Nese, Alison T. Gelsleichter, Tariq Javed, Seth W. Bruneel, Séké G. Godo, Courtney M. Krawice, So Ra Ko, and Robert G. Pluta.