Maxell, Ltd. v. BLU Products, Inc.

I'll research this case across docket sources, court records, and patent databases.

Let me dig into the specific patent and the IPR linkage.

Now let me look at the actual docket and the complaint/accused products.

Case Overview & Background

Parties. Maxell, Ltd. is a Kyoto-based Japanese consumer-electronics manufacturer — an operating company, not a classic NPE — that inherited a large patent estate from Hitachi's consumer/optoelectronics business (its Rule 7.1 disclosure in the companion BlackBerry suit identifies both Hitachi, Ltd. and Maxell Holdings, Ltd. as corporate parents). By 2018 the portfolio was reportedly ~5,300 patents, and Maxell was asserting roughly 47 of them across a multi-front campaign against BlackBerry, Olympus, Huawei, ASUS, ZTE, BLU, Fandango and FOTV (RPX data as reported June 2018). BLU Products, Inc. is a Miami-based importer/brand of low-cost, unlocked Android smartphones — a volume player in the U.S. prepaid and no-contract segment, with devices designed and manufactured in China and sold largely through carriers and mass retail. Maxell was represented by Mayer Brown (Jamie B. Beaber, Kfir B. Levy, James A. Fussell III, Tiffany A. Miller, Baldine B. Paul, Alison T. Gelsleichter) with Wilmington local counsel; BLU's counsel is not reflected in the sources I could access.

The patent and the accused technology. The sole patent in this docket, U.S. Patent No. 7,995,897 ("Video recording and reproducing method, and video reproducing apparatus and method," issued Aug. 9, 2011, inventors Takahashi and Shiokawa), claims a camera/playback apparatus that records moving pictures using one encoding method (e.g., MPEG-4) and still pictures using a second encoding method (e.g., JPEG), generates low-resolution thumbnails of both under a common encoding scheme, stores them on a recording medium, and reproduces them on a display. Maxell asserted at least claim 10. In practice the accused functionality is the ordinary smartphone camera/camcorder pipeline and thumbnail gallery — the same theory Maxell ran against Huawei's Mate 10 and ZTE's Axon 7, where it described the accused device as "a mobile communications terminal that is capable of reproducing video by one encoding method, such as MPEG-4 and pictures by a second encoding method, such as JPEG" producing "thumbnails having a smaller number of pixels than the pictures as evidenced by, for example, the file size" (Huawei complaint, Count 7). I could not retrieve the BLU complaint itself, so the specific BLU model numbers accused in this docket are not verified; the case is docketed as a willful-infringement, jury-demanded § 271 action (Justia docket).

Posture, venue, and significance. Filed October 13, 2017 in the District of Delaware — the same day as the companion BlackBerry suit, 1:17-cv-01446 — the case landed five months after TC Heartland, and BLU (a Florida corporation) was an obvious venue-challenge target; docket trackers list District of Nebraska Senior Judge Joseph F. Bataillon sitting by designation with Magistrate Judge Sherry R. Fallon (later Magistrate Judge Christopher J. Burke), reflecting the district's 2017 vacant-judgeship assignment (Docket Alarm; UniCourt). A materially identical Maxell v. BLU Products action on the '897 then appears in the Southern District of Florida, Miami Division, before Judge Cecilia M. Altonaga (1:18-cv-21231, filed Apr. 3, 2018, 131 accused products, six patents-in-suit, closed Aug. 3, 2018) (RPX Insight); the available records do not establish whether that was a § 1404(a) transfer, a dismissal-and-refiling, or a separate action, so I flag the mechanism as unverified rather than assume it. The case's notability is threefold: it illustrates Maxell's operating-company-but-PAE-style portfolio campaign sweeping in a small importer alongside OEM giants; it is one of the few Maxell matters where the '897 was actually tested, via Olympus's May 18, 2018 petition in IPR2018-00906 (one of six Olympus IPRs, -00904, -00906, -00908, -00909, -00910, -00911, challenging claims 1–12 of the '897 on Ishikawa, Peters and Takaichi), which the Board dismissed with prejudice on December 26, 2018 after a global Maxell–Olympus license resolved all PTAB and district-court disputes — meaning no institution decision and no final written decision ever issued on the '897's validity (termination order; Olympus petition). The surrounding market context is that Maxell's campaign produced a $43.3 million willful-infringement jury verdict against ZTE on June 29, 2018 in E.D. Tex. (Judge Robert Schroeder III), which gave the '897-family assertions licensing leverage well beyond this docket.

Unverified / caveats: the final disposition of the Delaware docket itself (transfer versus

I'll research this case systematically, starting with the docket and PTAB proceedings.

Key leads: an Olympus IPR (IPR2018-00906), a Huawei IPR (IPR2019-00464), and a related S.D. Fla. case. Let me dig into each.

Now let me pull the actual D. Del. docket entries and the S.D. Fla. case detail.

I'll research the counsel of record for Maxell, Ltd. in this D. Del. action.

Counsel of Record for Plaintiff Maxell, Ltd. — Maxell, Ltd. v. BLU Products, Inc., No. 1:17-cv-01447 (D. Del.)

Bottom line: Maxell was represented by a Mayer Brown LLP team out of Washington, D.C., headed by Jamie B. Beaber, with Benjamin J. Schladweiler acting as Delaware local counsel under D. Del. Local Rule 83.5. The plaintiff-side attorney list is consistent across the Justia and UniCourt docket mirrors for this case, and matches the pro hac vice practice used in Maxell's companion D. Del. suits filed the same day (e.g., Maxell v. BlackBerry, No. 1:17-cv-01446).

Attorneys of record for Maxell, Ltd.

Caveats and open items (flagged, not resolved)

• Docket sourcing is secondary, not PACER-native. The attorney list above comes from Justia's and UniCourt's mirrors of the D. Del. docket (last docket update captured March 29, 2018). I could not pull the PACER docket sheet itself, so individual pro hac vice orders granting each Mayer Brown attorney in -1447 specifically are not independently confirmed — the grants I verified (D.I. dated 3/8/2018) are from the companion case, No. 1:18-cv-00310.
• Local counsel may have changed. In the two companion D. Del. Maxell matters (Nos. 1:17-cv-01446 and 1:18-cv-00310), a Notice of Substitution of Counsel was filed April 2, 2018, substituting Timothy Devlin (Devlin Law Firm LLC, Wilmington) for Schladweiler. I found no corresponding substitution entry for -1447; do not assume it occurred here without checking the docket. (Schladweiler also withdrew from the S.D. Fla. BLU case in May 2018 — D.I. 60, granted D.I. 61.)
• Robert G. Pluta (Mayer Brown, Chicago) was admitted pro hac vice for Maxell in related Maxell matters (D. Del. -1446 and S.D. Fla. 1:18-cv-21231) but does not appear on the -1447 attorney list in the available docket mirrors; treat him as not of record here absent confirmation.
• No in-house counsel of record appears on the docket; Maxell (Japanese parent, formerly Hitachi Maxell; subsidiaries Maxell Holdings, Ltd. and Hitachi, Ltd. identified in its Rule 7.1 disclosure) litigated entirely through outside counsel. I am not naming any Maxell legal-department attorney because I found no sourced appearance.
• Nothing in these filings is sealed as to counsel; the pro hac vice motions and Rule 7.1 disclosure are public. The reason the record is thin is not sealing but the case's early lifecycle — Maxell refiled against BLU in the S.D. Fla. on April 3, 2018 (No. 1:18-cv-21231), and the disposition of the Delaware action is still unverified (Docket Alarm lists Judges Bataillon/Fallon; UniCourt lists status as unclassified). If -1447 was dismissed or transferred in mid-2018, the last counsel of record would be as listed above.

Sources: Justia docket mirror for No. 1:17-cv-01447 (https://dockets.justia.com/docket/delaware/dedce/1:2017cv01447/63429); UniCourt docket mirror (https://unicourt.com/case/pc-db1-maxell-ltd-v-blu-products-inc-[590500](/patent/590500)); Unified Patents litigation portal for companion No. 1:17-cv-01446 (https://portal.unifiedpatents.com/litigation/Delaware%20District%20Court/case/1:17-cv-01446); Olympus Corp. v. Maxell, Ltd., C.A. No. 18-216 (MN) (D. Del. Nov. 14, 2018) (counsel listing); Mayer Brown attorney bios (Beaber, Miller, Grimaldi — the last describing the Maxell/BLU and Maxell/ZTE work); Maxell's C.D. Cal. complaint in No. 2:17-cv-07534 (Kfir B. Levy signature block).

I'll research defense counsel for BLU Products in this action and the related matters.

Good — I found defendant counsel in the related S.D. Fla. case. Now let me verify whether any defense appearance was made in the Delaware docket itself.

Now let me pull the Delaware docket directly and identify the other two S.D. Fla. defense attorneys.

Defense counsel of record — Maxell, Ltd. v. BLU Products, Inc., No. 1:17-cv-01447 (D. Del.)

Bottom line

In the Delaware docket itself, no defense counsel ever appeared — or at least none is reflected in any accessible docket record. The Justia and UniCourt mirrors of No. 1:17-cv-01447 list nine plaintiff-side attorneys and zero defendant-side attorneys; no answer, motion, stipulation, waiver of service, or pro hac vice motion by BLU appears (Justia; UniCourt). Docket-aggregator records describe the case as closed with no defense appearances captured (Ex Parte AI Lab docket record).

BLU's actual counsel of record in the Maxell dispute appeared in the S.D. Fla. refiling, No. 1:18-cv-21231 (filed Apr. 3, 2018) — a three-attorney team from a single Miami-area boutique: Bernard Lewis Egozi and Isaac Salomon Lew of Egozi & Bennett, P.A., plus Dennis James Butler. Those are the names on BLU's side of the Maxell litigation, and Egozi is BLU's standing patent-defense counsel across more than a decade of cases.

Counsel of record for BLU Products (S.D. Fla. No. 1:18-cv-21231)

Important caveats

• The Delaware record is thin because the case never got to a defense appearance. Maxell filed in D. Del. on Oct. 13, 2017 (same day as Maxell v. BlackBerry, No. 1:17-cv-01446) and refiled against BLU in BLU's home district on Apr. 3, 2018. The 11th Circuit case shows 131 accused products and six patents-in-suit (RPX Insight), versus a single patent ('897) in Delaware — consistent with the Delaware case being voluntarily dismissed and superseded by the Florida action, though I could not retrieve the dismissal entry and therefore do not state that mechanism as established. My earlier section already flagged the transfer-vs.-refiling question as unverified; nothing I found resolves it.
• BLU's counsel was active on the merits in Florida: BLU demanded a jury (Justia notes "Jury Demanded By: Defendant"), moved on discovery, and joined a Joint Motion for Entry of Claim Construction Order (D.I. 68, June 1, 2018) before the case closed Aug. 3, 2018. So Egozi/Lew/Butler were genuinely litigating, not just noting appearance.
• Local counsel: No Delaware local counsel for BLU is reflected anywhere in -1447. In Florida no separate local-counsel firm appears — Egozi & Bennett is itself a Florida firm, so the local/pro hac vice split typical of D. Del. practice was unnecessary there. Maxell, by contrast, used Marcos Daniel Jimenez as its Florida local counsel alongside the Mayer Brown team.
• No BLU in-house counsel of record is listed on any docket I could access. Given Egozi & Bennett's decade-long role as BLU's outside patent counsel, the defense was effectively outsourced rather than run in-house.
• Sourcing limits: all of the above is from docket mirrors (Justia, UniCourt, Unified Patents portal, PlainSite, RPX) and secondary aggregators, not PACER-native docket sheets. I did not independently verify pro hac vice orders in -1447 (there would be none absent an appearance) and I could not pull a firm biography or bar profile for Dennis James Butler before exhausting my search budget.