Untitled case

I'll research this proceeding and the underlying patent/parties before drafting.

Case Overview & Background

A note on the caption first. The case metadata in this assignment lists "Unified Patents" as the plaintiff/petitioner, but every PTAB paper I could locate captions this proceeding BlackBerry Corporation (Petitioner) v. Maxell, Ltd. (Patent Owner), Case IPR2019-00087, U.S. Patent No. 6,765,616 B1. The Unified Patents attribution appears to trace to Unified's public PTAB analytics portal, which indexes the case as "IPR2019-00087 – BlackBerry Ltd v. Maxell Corp" (portal.unifiedpatents.com/ptab/case/IPR2019-00087); Unified is not a party on any docket paper I found. Per your operating rules I've flagged rather than silently resolved the conflict — but for party identification and outcome I have relied on the primary PTAB filings, which are consistent across the petition, exhibit list, and termination decision (Petitioner's Updated Exhibit List, Paper 13; Termination Decision, Paper 14).

Parties. BlackBerry Corporation is the U.S. arm of BlackBerry Ltd., the Canadian enterprise-software and IoT/security company that exited the handset hardware business in this era; it was a large operating-company petitioner, represented by Oblon, McClelland, Maier & Neustadt LLP. Maxell, Ltd. of Kyoto, Japan is the patent owner and a genuine operating company (batteries, storage media, projectors) descended from Hitachi Maxell — but by 2017–2018 it was running one of the more aggressive legacy-electronics licensing campaigns in the country, asserting Hitachi/Maxell consumer-electronics portfolios against Huawei, ZTE, Olympus, BlackBerry, Lenovo/Motorola, VIZIO and Samsung in D. Del., E.D. Tex., W.D. Tex., and the ITC (see, e.g., Maxell, Ltd. v. Huawei Device U.S. Inc., 297 F. Supp. 3d 668 (E.D. Tex. 2018); ITC Inv. Nos. 337-TA-1312, -1324, -1338). Maxell was represented here by Mayer Brown LLP (Robert G. Pluta, Michael J. Word, Amanda S. Bonner, Luiz A. Miranda, Saqib J. Siddiqui).

Technology and patents. The '616 patent (Appl. No. 09/520,836) is an imaging patent — a solid-state image pickup device with a color filter array in which colors are arranged to "cyclically appear horizontally at [an] interval" while "the same colors [are] arranged vertically." That limitation is the crux of the infringement dispute: in Maxell, Ltd. v. Olympus Corp., No. 1:18-cv-00216 (D. Del.), Olympus sought declaratory judgment of non-infringement precisely on the ground that its products "lack color filters to pass 'colors respectively arranged to cyclically appear horizontally at [an] interval and to pass the same colors arranged vertically'" (D.I. 1, ¶ 18). The accused technology in the parallel case was therefore image sensors/cameras in consumer devices — here, BlackBerry smartphones — asserted in Maxell, Ltd. v. BlackBerry Corp., et al., No. 1:17-cv-01446 (D. Del.) (Bataillon, J.; Fallon, M.J.), which pleaded the '616 patent along with the '821, '284, '209 and '897 patents. IPR2019-00087 was the lead case in a coordinated five-petition cluster filed the same day against Maxell's related family: IPR2019-00088 ('334), -00089 ('394, "Multimedia player displaying operation panel depending on contents"), -00095 ('897), and -00097 ('604) (pro hac vice order covering all five, Paper 9). Maxell's February 8, 2019 Preliminary Response relied on Ex. 2001 (U.S. Pat. No. 5,668,597, progressive scan) and Ex. 2002 (Haskell, Introduction to MPEG-2), indicating the petition's grounds were built on imaging/video-processing art with a § 103 obviousness theory.

Procedural posture and why it matters. The petition was filed October 15, 2018; the Board issued its Notice of Accord Filing Date on November 8, 2018; pro hac vice admission for Stephen McBride was granted January 23, 2019; Maxell filed its POPR on February 8, 2019; and on April 23, 2019 the parties filed a Joint Motion to Terminate together with a joint request to keep the settlement agreement confidential as business confidential information (Papers 11–13). The Board terminated the proceeding on April 29, 2019 — before any institution decision (the portal records "Institution Date: N/A"). Because this is an administrative proceeding, there is no district division or Article III judge; the case sat before an unnamed PTAB panel (the sources I could verify do not identify the panel members). The venue that matters for the infringement story is the District of Delaware, where Maxell v. BlackBerry (17-1446) was pending and where Judge Bataillon was already managing a multi-patent, multi-defendant Maxell wave — Delaware was attractive to Maxell as a single consolidated forum with a deep patent bench, and BlackBerry's IPR cluster was the standard counter-move to pressure that case. The case is notable for three reasons: it is an example of a pre-institution, portfolio-wide settlement that wiped out five coordinated challenges in a single stroke (the same counsel/expert later confirmed "Case settled in May 2019" across -00087, -00095 and -00097); it illustrates the defensive-aggregation playbook used against an operating-company licensor rather than a classic NPE; and it marks a data point in Maxell's long-running monetization program, which continued against Lenovo/Motorola (ITC 337-TA-1312 and -1324; W.D. Tex. No. 6:22-cv-00334), VIZIO (337-TA-1338) and Samsung well after BlackBerry settled — including a later Motorola IPR (IPR2022-01348) on the '394 patent that was in this same cluster.

Sourcing caveats. I could not verify from primary sources: the specific claims challenged in the '616 petition; the identity of the Board panel; the terms of the settlement or whether it included a license; whether Maxell v. BlackBerry (D. Del. 17-1446) was dismissed and on what terms; or whether the termination was conditioned on anything beyond the joint motion. Those should be confirmed against PTAB E2E/PTACTS and the Delaware docket before being relied on. The "Unified Patents as plaintiff" metadata should likewise be corrected to BlackBerry Corporation.

I'll research this proceeding. Note at the outset: the metadata describes a PTAB inter partes review (IPR2019-00087), not an Article III district court case — so I'll reconstruct the IPR timeline and then check for any parallel district court litigation on the '616 patent.

Key finding already: PTAB records identify the petitioner in IPR2019-00087 as BlackBerry Corporation, not Unified Patents. Let me dig into the IPR papers and the parallel district court case.

Now let me pin down the '616 patent's subject matter, the petition's grounds, and the companion BlackBerry IPRs.

Threshold correction: caption, parties, and what "the litigation" is

Two things need flagging before the chronology, because the case metadata is partly wrong:

1. The petitioner was BlackBerry Corporation, not Unified Patents. Every primary source — the Board's own papers, the patent owner's mandatory notices, and Maxell's later filings — captions this proceeding BlackBerry Corp. v. Maxell, Ltd., IPR2019-00087. The 2019-04-29 termination decision is captioned "BLACKBERRY CORPORATION, Petitioner, v. MAXELL, LTD., Patent Owner." (Termination Decision, Paper 14). "Unified Patents" appears only because Unified operates a public PTAB/litigation tracking portal (portal.unifiedpatents.com) whose page is titled "IPR2019-00087 – BlackBerry Ltd v. Maxell Corp" — that portal page is almost certainly the source of the metadata error. I'm treating the docket record as controlling on party identity.
2. There is no Article III "patent infringement litigation" in this docket. IPR2019-00087 is a PTAB trial that was terminated before institution. The infringement litigation was a parallel case: Maxell, Ltd. v. BlackBerry Corp., C.A. No. 1:17-cv-01446-MN-SRF (D. Del.). Because the two tracks settled simultaneously, I've reconstructed both below and flagged which events belong to which forum.

---

Chronology

1. The district court case: filing and pleadings

2017-10-13 — Complaint filed, D. Del. No. 17-1446 (D.I. 1). Maxell, Ltd. (successor to Hitachi Maxell, Ltd.; Kyoto, Japan) sued BlackBerry Corporation and BlackBerry Ltd. on seven patents: U.S. 6,580,999; 6,765,616; 6,973,334; 7,199,821; 7,995,897; 8,170,394; and 9,100,604. The '616 patent is titled "Electric Camera" (Nakano et al.), issued 2004-07-20 — it claims an image-sensing device with a pixel array sized relative to the effective scanning lines of the display field formats (the same patent was later asserted against Olympus's OM-D E-M10 digital camera). Jury demand made.

2017-10-16 — Service on BlackBerry Corporation (answer originally due 2017-11-06); BlackBerry Ltd. served later. This date matters for § 315(b) (see below).

2017-11-01 → 2018-01-03 — Two stipulated extensions pushed the response deadline to 2018-01-19.

2018-01-19 — BlackBerry's Rule 12(b)(6) motion to dismiss for failure to state a claim (D.I. 12), briefed with an answering brief (2018-02-02), reply (2018-02-09), and a Maxell request for oral argument (2018-02-16). There was also a skirmish over a "Notice of Subsequent Authority" filed by Maxell (2018-02-23) to which BlackBerry objected. This motion was never decided on the merits — it was withdrawn as part of the August 2018 partial-dismissal stipulation.

2018-08-24 — Joint stipulation of partial dismissal (D.I. 27): Count 1 (the '999 patent) dismissed with prejudice; BlackBerry's motion to dismiss (D.I. 12) withdrawn; all other counts and defenses preserved; each side to bear its own fees on the dismissed count; the stipulation not usable against either party. (D.I. 27)

2018-09-07 — Answer and counterclaims of BlackBerry Corporation and BlackBerry Ltd. (D.I. 30), with jury demand, seeking declarations of non-infringement and invalidity of the remaining asserted patents, including the '616 patent. Note the sequencing: the answer came after the Rule 12 motion was resolved by stipulation and before the IPR petitions.

2. The PTAB track

2018-10-15 — Petition filed, IPR2019-00087, challenging claims 1, 3, 6–8, 10–13, 15, 18 and 19 of the '616 patent. Petitioner's counsel: Oblon, McClelland, Maier & Neustadt LLP (W. Todd Baker, Marc Weinstein, Christopher Ricciuti, Ali Allawi, Michael West), with Stephen McBride admitted pro hac vice. Exhibits 1001–1011 accompanied the petition (Ex. 1001 = the '616 patent; Ex. 1002 = its prosecution history).

Strategic note on timing (my computation, not a sourced finding): suit was served on BlackBerry Corporation on 2017-10-16, so BlackBerry's one-year § 315(b) window closed 2018-10-16. The petition was filed 2018-10-15 — one day inside the bar. The same day, BlackBerry filed contemporaneous petitions in four companion IPRs covering the sister patents: IPR2019-00088 ('334), IPR2019-00089 ('394), IPR2019-00095 ('897) and IPR2019-00097 ('604) — the five proceedings are listed together in a single Board order. (PHV Order, 2019-01-23)

2018-11-02 — Patent Owner's power of attorney and mandatory notices filed by Maxell.

2018-11-08 — Notice of Accord Filing Date (Paper 6) — the three-month clock for the preliminary response starts here.

2018-11-28 — Petitioner's motion for pro hac vice admission of Stephen McBride, with an updated exhibit list adding Ex. 1012.

2019-01-23 — Board grants pro hac vice admission of McBride (Paper 9).

2019-02-08 — Patent Owner Preliminary Response (Paper 10), with Ex. 2001 (U.S. 5,668,597, "progressive scan") and Ex. 2002 (Barry Haskell, Introduction to MPEG-2). Maxell's counsel: Mayer Brown LLP (Robert G. Pluta, Michael J. Word, Amanda S. Bonner, Luiz A. Miranda, Saqib J. Siddiqui, James B. Beaber, Jamie B. Beaber) and the Devlin Law Firm (Timothy Devlin, James Gorman). The exhibits indicate a POPR built around the display-scanning/MPEG-2 context of the '616 claims — but the substance of the argument is not reflected in any source I could verify, and no institution decision was ever entered, so BlackBerry's specific grounds and prior art (Exs. 1003–1011) are not publicly confirmed in the documents I located. I'd resist characterizing the merits beyond "the POPR was filed and the Board never ruled on it."

2019-02-20 — Maxell's Initial Infringement Contentions served in the district court case (D.I. 47) — the last substantive merits event in Delaware.

2019-04-18 — Joint stipulation and order of dismissal in D. Del. 17-1446: all of Maxell's claims for relief and BlackBerry's counterclaims and defenses dismissed with prejudice, each party bearing its own attorneys' fees, costs and expenses. (D.I. 48)

2019-04-22 — District court dismissal entered. The Board's termination decision expressly records that "the district court case in which Patent Owner asserted the '616 patent against Petitioner … was dismissed on April 22, 2019." (One aggregator lists the case as closed 2019-03-29; I treat the PTAB's recital of 2019-04-22 as the better evidence.)

2019-04-23 — Joint Motion to Terminate the IPR (Paper 11) and Joint Request to File Settlement Agreement as Business Confidential Information (Paper 12), filed with Ex. 1013 (a "true copy" of the written settlement agreement) and an updated exhibit list. The Board had authorized the motion by email on 2019-04-22. The parties represented that the agreement fully resolved the disputes over the '616 patent, covered both the IPR and the Delaware case, and was the complete agreement in connection with the termination.

2019-04-29 — Termination decision (Paper 14, APJs Zecher, McMillin and Hudalla). The Board:

• dismissed the petition under 37 C.F.R. § 42.71(a) without deciding institution

I'll research this. Note at the outset: the metadata describes an IPR before the PTAB, not a district court infringement action — so "plaintiff's counsel" here means counsel of record for the petitioner, Unified Patents. Let me verify against the docket and PTAB records.

Important finding: the real docket for IPR2019-00087 is captioned BlackBerry Corporation v. Maxell, Ltd., not Unified Patents. Let me verify counsel details and the pro hac vice record.

Let me pin down the exact lead/backup counsel designations in the Petition and confirm attorney details.

Threshold correction: the party identification in the case metadata does not match the docket

Before answering, one important flag. The metadata says the plaintiff/petitioner is Unified Patents. That is not what the PTAB record shows.

*IPR2019-00087 is captioned BlackBerry Corporation v. Maxell, Ltd., U.S. Patent No. 6,765,616 B1*, filed October 15, 2018 and terminated April 29, 2019 on a joint motion to terminate after settlement. The petitioner — the party in the "plaintiff" position, since an IPR has no plaintiff — was BlackBerry Corporation, not Unified Patents. The likely source of the error: Unified Patents operates a free public PTAB docket portal (portal.unifiedpatents.com/ptab/case/IPR2019-00087) that hosts the docket data for this case. A metadata scrape of that portal plausibly captured the portal operator as the party.

I found no filing, appearance, or settlement in IPR2019-00087 by Unified Patents. To be explicit: if Unified Patents is truly the party you need counsel for, this is the wrong docket number, and no such counsel exists in this record. I have not invented one.

Also note the framing: this is a PTAB inter partes review, not a district court infringement case. There is no "local counsel" role and no PACER docket in the conventional sense; counsel of record is established by the § 42.8(b)(3)/§ 42.10 designations in the Petition and the Powers of Attorney. A parallel district court case existed (Maxell asserted the '616 patent against BlackBerry and it was dismissed April 22, 2019, per the Board's termination decision), but that record is not before me and I have not confirmed its counsel.

---

Counsel of record for the party in the plaintiff/petitioner position (BlackBerry Corporation)

All from Oblon, McClelland, Maier & Neustadt, LLP, 1940 Duke Street, Alexandria, VA 22314 — an IP-only firm; its single office is in Alexandria, a few blocks from the USPTO.

Note on the registration number: the certificate of service in Patent Owner's Power of Attorney paper (Nov. 2, 2018) lists Baker as Reg. No. 45,264, while his signature blocks on Petitioner's filings show 45,265. One of the two is a typographical error in the original documents; I cannot resolve which from the secondary sources available.

---

Who is not on the list

• No in-house BlackBerry counsel appears in the § 42.8 designation, the Powers of Attorney, or any service list in this proceeding. BlackBerry used outside counsel exclusively here.
• No local counsel — not applicable at the PTAB.
• No Unified Patents counsel — see the correction above.

For contrast: opposing counsel (Patent Owner Maxell, Ltd.)

Mayer Brown LLP, Chicago (71 S. Wacker Drive): Robert G. Pluta (Reg. No. 50,970), with Michael J. Word, Amanda S. Bonner, Luiz A. Miranda, Saqib J. Siddiqui, and James B. Beaber on the service list. Pluta signed the Joint Request to File Settlement Agreement (Paper 12) and the Patent Owner Power of Attorney (Paper 4).

Status caveat

Because the case terminated before institution (Paper 14, April 29, 2019), none of these attorneys withdrew — the list above is the final counsel of record. The settlement agreement itself was filed as business confidential information (Ex. 1013) under 37 C.F.R. § 42.74(c) and is sealed; it does not affect counsel identification.

Sources: PTAB Papers 1–14 in IPR2019-00087 (via Docket Alarm and the Unified Patents PTAB portal); Paper 6 filings and the Nov. 2, 2018 Patent Owner Power of Attorney certificate of service; Paper 9 (Decision Granting Pro Hac Vice Admission of Stephen McBride); Paper 14 (Termination Decision); Ex. 1012 (McBride Declaration); Duane Morris bio for Ricciuti; IPWatchdog author page for McBride.

If your research target is actually a Unified Patents petition involving the '616 patent, I can search for that separately — but it is not this docket.

I'll start by pinning down what this proceeding actually is, since the request frames it as an infringement case but the metadata says PTAB.

Important threshold finding: this is not an infringement action. Let me verify the party alignment, the counsel lists on the docket, and the parallel district court case referenced in the termination order.

Now let me verify the defense-side counsel in the parallel Delaware infringement action and the pro hac vice details.

Threshold correction before the attorney list

Two things in the case framing need to be fixed, because they change who "the defendant" is:

1. IPR2019-00087 is not a patent infringement case. It is an inter partes review before the PTAB. There is no plaintiff and no defendant — there is a Petitioner and a Patent Owner. The real caption is BlackBerry Corporation v. Maxell, Ltd., Case IPR2019-00087, on U.S. Patent No. 6,765,616 B1 (Nakano et al., image-pickup/color-filter-array subject matter).
2. Unified Patents was not a party. It appears in the metadata only because Unified Patents operates the public docket portal (portal.unifiedpatents.com/ptab/case/IPR2019-00087) that hosts this PTAB docket. The Petitioner of record was BlackBerry, represented by Oblon, McClelland, Maier & Neustadt LLP (W. Todd Baker, Reg. No. 45,265, et al.), plus Stephen McBride admitted pro hac vice (Paper 9, Jan. 23, 2019).

So there are two candidate answers, and I've given both: (A) the party answering the petition in the IPR (Maxell, the "defensive" side), and (B) the defendant in the actual infringement suit, Maxell, Ltd. v. BlackBerry Corp., C.A. No. 1:17-cv-01446-MN (D. Del.), which the Board's termination order identifies as the dismissed district court case (Paper 14 at 2–3).

---

A. Respondent / Patent Owner side in the IPR — Maxell, Ltd.

All of record via Maxell's Power of Attorney (Paper 4, Nov. 2, 2018) and Mandatory Notices (Paper 5, Nov. 2, 2018). Mayer Brown LLP is the sole firm of record; there is no local counsel in a PTAB proceeding.

---

B. If you mean the infringement case — defendant BlackBerry Corporation / BlackBerry Ltd.

In Maxell, Ltd. v. BlackBerry Corp. & BlackBerry Ltd., C.A. No. 1:17-cv-01446-MN (D. Del.) — the case in which the '616 patent was asserted and which was dismissed April 22, 2019 as part of the same settlement — the defense team was McGuireWoods LLP (national) plus Barnes & Thornburg LLP (Delaware local counsel). This roster is drawn from the Feb. 20, 2019 service notice in that docket (docketalarm.com/cases/Delaware_District_Court/1--17-cv-01446/.../docs/47.pdf) and the corresponding pro hac vice motions.

---

Sourcing gaps and cautions

• Stephen McBride (Petitioner's pro hac vice counsel admitted by Paper 9 on Jan. 23, 2019): I could not confirm from the record I retrieved whether he was BlackBerry in-house counsel or an Oblon attorney, so I am not assigning him a firm. Do not treat his affiliation as established.
• The individual pro hac vice grant orders in D. Del. were not individually verified by me; the attorney list is reconstructed from the service notice (D.I. 47) and the corresponding motions as summarized on the docket.
• The settlement agreement itself (Ex. 1013) was granted confidential treatment under 37 C.F.R. § 42.74(c) (Paper 14), so any counsel-of-record details tied to the settlement are sealed.
• I found no appearance by Unified Patents as a party; treat any suggestion that Unified was plaintiff or petitioner in IPR2019-00087 as a metadata artifact of the Unified Patents docket portal.
• The Board never instituted (termination came before an institution decision), so there is no final written decision, no IPR estoppel, and no Federal Circuit appeal from this proceeding.