By Adam Lidgett

Law360 (February 18, 2021, 5:59 PM EST) -- Apple wants to postpone an upcoming trial in which Maxell has accused Apple of infringing multiple patents with smartphone and tablet technologies used in its iOS devices, citing the COVID-19 pandemic.

On Wednesday, Apple moved to stay proceedings in the case pending U.S. Patent and Trademark Office review of the patents at issue, or at least push back the trial date to later in 2021 due to COVID-19.

The court already moved the trial date to its current March date because of the pandemic, according to Apple, which added that the pandemic isn't getting any better.

"Apple requests that at a minimum the trial be continued to later in 2021, when the trial participants will have had an opportunity to be vaccinated," Apple said. "Neither side will be prejudiced by a continuance, whereas proceeding with trial now will limit the parties' opportunity to present a full and fair case because several witnesses outside of Texas will be unable to safely appear at trial."

Apple additionally said that four of the six patents at issue in the case are already being looked at by the USPTO, and that the company expects decisions to be made soon as to whether to grant ex parte reexamination requests related to the two other patents.

That warrants staying the case, according to Apple.

"Apple respectfully submits that the resources of the court and the parties — and the health of those who would participate in an in-person trial in March — are best conserved by staying this case while the PTO completes its work," Apple said.

Kyoto, Japan-based Maxell sued Apple in March 2019, claiming it infringed 10 patents covering technology ranging from cellphones to batteries to cameras. Last month, however, the court told Maxell that it had to narrow its case down to six patents, which the company did, according to court records.

In a separate case, Apple has asked the Federal Circuit for en banc review of a panel decision dismissing five appeals of Patent Trial and Appeal Board decisions denying inter partes review.

Maxell has opposed that bid at the appellate court, saying the U.S. Supreme Court has properly held that the PTAB's decisions on whether to undertake a patent review are not subject to appellate review. Ruling otherwise, Maxell said, would contravene the America Invents Act by opening "the floodgates to mandatory appellate review of thousands of [U.S. Patent and Trademark Office] institution decisions."

Counsel for Maxell declined to comment Thursday.

Counsel for Apple did not immediately respond to requests for comment Thursday.

The patents-in-suit are U.S. Patent Nos. 6,329,794; 6,430,498; 6,580,999; 6,748,317; 7,116,438; and 8,339,493.

Maxell is represented by Geoff Culbertson and Kelly Tidwell of Patton Tidwell & Culbertson LLP, and Jamie B. Beaber, Alan M. Grimaldi, Kfir B. Levy, James A. Fussell III, Baldine B. Paul, Tiffany A. Miller, Saqib J. Siddiqui, Bryan C. Nese, William J. Barrow, Alison T. Gelsleichter, Clark S. Bakewell, Robert G. Pluta and Amanda Streff Bonner of Mayer Brown LLP.

Apple is represented by Harry L. Gillam Jr. and Melissa Richards Smith of Gillam & Smith LLP, and Mark D. Fowler, Brent K. Yamashita, Christian Chessman, Sean C. Cunningham, Erin P. Gibson, Kevin Hamilton, David R. Knudson, Michael Jay, Aaron G. Fountain, Zachary Loney, Dawn M. Jenkins, Paul Steadman and Stephanie Lim of DLA Piper.

The case is Maxell Ltd. v. Apple Inc., case number 5:19-cv-00036, in the U.S. District Court for the Eastern District of Texas.

--Additional reporting by Katie Buehler, Lauren Berg, Ryan Davis, Cara Salvatore, Hailey Konnath, Dani Kass, Britain Eakin and Tiffany Hu. Editing by Stephen Berg.

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