Director Reverses Board on Two Maxell OFDM Claims, and Both Sides Notice Appeals.

The proceedings

The proceedings are Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. v. Maxell, Ltd., IPR2024-00906, on U.S. Patent 11,445,241 B2, and IPR2024-00907, on U.S. Patent 10,129,590 C1. Samsung's petitions (Paper 3 in each) are dated May 17, 2024 and May 31, 2024, respectively. The Board instituted both reviews on December 11, 2024 (Paper 11 in each). The final written decisions say that, according to the parties, the patents are the subject of Maxell, Ltd. v. Samsung Electronics Co., Ltd., No. 5:23-cv-00092 (E.D. Tex.).

In IPR2024-00906, Samsung challenged claims 1, 4 to 6, and 8 to 27 of the '241 patent. In IPR2024-00907, it challenged claims 1, 4, 5, 8 to 12, and 14 to 25 of the '590 patent. The '907 decision notes that the '590 patent received a reexamination certificate and that the challenged claims are the amended claims that certificate identifies.

The two patents

U.S. Patent 10,129,590, titled "Display Apparatus and Video Processing Apparatus," issued November 13, 2018. U.S. Patent 11,445,241, titled "Information Processing Apparatus and Information Processing Method," issued September 13, 2022. Both name Maxell, Ltd. as assignee and claim priority to Japanese application No. 2007-306750, filed November 28, 2007. The two patents share an abstract, which describes a display apparatus with a first radio communication unit that receives video from an external video processing apparatus, such as a camera, a second radio communication unit that connects to a network, and a control unit that assigns the first unit's connection higher priority and controls the transmission rates.

The final written decisions

The panel was Administrative Patent Judges Kevin C. Trock, John A. Hudalla, and Frederick C. Laney, with the opinion by Judge Laney. Samsung asserted five obviousness grounds under pre-AIA 35 U.S.C. § 103(a) against every challenged claim: N93, Dua, and Herle (Ground 1); those three plus Rooyen, Desai, BT-Spec, 3GPP-Spec, and Kao (Ground 2); Dua and Herle (Ground 3); Dua, Herle, and N93 (Ground 4); and Dua, Herle, N93, Rooyen, Desai, BT-Spec, 3GPP-Spec, and Kao (Ground 5). N93 is the Nokia N93 User Guide.

In decisions entered April 27, 2026 (Paper 47 in each), the Board held claims 1, 4 to 6, and 8 to 27 of the '241 patent and claims 1, 4, 5, 8 to 12, and 14 to 25 of the '590 patent unpatentable. It found that Samsung had not shown that 3GPP-Spec is prior art, but held that leaving that reference out did not dispose of Grounds 2 and 5 because the remaining prior art in those grounds, on the full record, showed the claims unpatentable. The Board also denied Maxell's motion to exclude.

Judge Hudalla concurred in part and dissented in part. He agreed that Samsung had not shown 3GPP-Spec to be prior art but treated it as integral to Grounds 2 and 5, and would have found those grounds not shown. He would also have found Ground 3, Dua and Herle without N93, not shown. He joined the holdings under Grounds 1 and 4 except for claim 15 of the '241 patent and claim 21 of the '590 patent, which require a second radio communication circuit that conducts demodulation through Orthogonal Frequency Division Multiplexing (OFDM). On those claims he concluded that Samsung's contentions for that limitation referred back to contentions that do not address OFDM modulation.

Director Review

Maxell requested Director Review of both decisions (Paper 48 in each), and Samsung filed authorized responses (Paper 49 in each). In an order dated September 9, 2026 (Paper 51 in IPR2024-00906; Paper 50 in IPR2024-00907), Director John A. Squires granted review, agreed with the dissent that Samsung had not shown the required demodulation through OFDM, and reversed the final written decisions as to claim 15 of the '241 patent and claim 21 of the '590 patent. The order states that Samsung has not shown those two claims unpatentable by a preponderance of the evidence. The order reverses the decisions only as to those two claims.

The notices of appeal

Maxell filed notices of appeal to the Federal Circuit on October 30, 2026 (Paper 52 in IPR2024-00906; Paper 51 in IPR2024-00907), under 35 U.S.C. § 142, from the final written decisions. The issues it lists include the unpatentability holdings on each ground for claims 1, 4 to 6, 8 to 14, and 16 to 27 of the '241 patent and claims 1, 4, 5, 8 to 12, 14 to 20, and 22 to 25 of the '590 patent, the claim constructions applied, and the public accessibility of the asserted prior art before the critical date.

Samsung filed notices of appeal on November 9, 2026 (Paper 53 in IPR2024-00906; Paper 52 in IPR2024-00907), from the Director's order and the final written decisions. The issues it lists are whether the Director erred in holding claim 15 of the '241 patent and claim 21 of the '590 patent not shown unpatentable, and whether the Director and the Board erred in holding that 3GPP-Spec was not shown to be publicly accessible before the critical date of November 28, 2007.

The '590 patent in the Texas case

The '590 patent was also asserted in Maxell, Ltd. v. Samsung Electronics Co., Ltd., No. 5:23-cv-00092 (E.D. Tex.). The final judgment entered September 26, 2025 found that Samsung does not infringe asserted claims 1, 11, and 16 of the '590 patent. Maxell filed a notice of appeal from that judgment on October 24, 2025, and the Federal Circuit docketed that appeal as No. 26-1111.

What to watch next

Watch for the Federal Circuit to docket the appeals from IPR2024-00906 and IPR2024-00907, for the USPTO's certified lists, and for any order treating the appeals as companion cases.