Litigation

Maxell, Ltd. v. Olympus Corporation et al.

closed (settled)

1:18-cv-00310

Filed
2018-02-23

Patents at issue (1)

7551209

Plaintiffs (1)

Summary

Companion infringement action to Olympus's declaratory judgment case; Maxell accused Olympus of infringing the '209 Patent. The cases were treated as associated (same judges, parties, and accused products) and resolved as part of the same 2018 settlement.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case across multiple sources before drafting.

Now let me dig into the '209 patent itself, the parallel IPRs, and Maxell's broader campaign.

Let me verify the counts in the '310 complaint, the IPR petition set, and the Maxell campaign context.

Case Overview

Parties. Maxell, Ltd. is a Japanese operating company (registered in Oyamazaki, Kyoto) founded in 1961 as Maxell Electric Industrial Co.; it sells storage media, optical discs, batteries, and consumer electronics accessories. Critically for this suit, Maxell is also the end point of a chain of Hitachi IP transfers — Hitachi, Ltd. → Hitachi Consumer Electronics (2009) → Hitachi Maxell (2013) → Maxell (by reorganization/name change) — and it does not make cameras or phones. In that respect it functions as a monetization vehicle for legacy Hitachi consumer-electronics patents, even though it is nominally an operating company rather than a classic NPE/PAE. Maxell's complaint expressly says it "actively enforces its patents through licensing and/or litigation." (D.I. 1 ¶ 4.) The defendants are Olympus Corporation (Tokyo; optics/imaging and medical devices) and its U.S. sales subsidiary Olympus America Inc. (New York corporation, Center Valley, PA). Maxell was represented by the Devlin Law Firm locally with Mayer Brown LLP as national counsel (Beaber, Levy, Fussell, Miller, Gelsleichter, Pluta); Olympus by Shaw Keller LLP locally and Perkins Coie LLP nationally (McCabe, Moffa, Matthew, Canavera).

Accused technology and patents. The accused instrumentalities were Olympus's consumer digital cameras: the OM-D E-M1 Mark II, OM-D E-M5 Mark II, OM-D E-M10 Mark II, PEN-F, PEN E-PL8, Tough TG-4/TG-3/TG-5, and the Air A01. (D.I. 1; Olympus Corp. Answer ¶ 25 admits the products exist.) The case metadata identifies U.S. Patent No. 7,551,209, "Imaging Apparatus and Method for Controlling White Balance" (issued June 23, 2009; app. 11/715,425 filed March 8, 2007; priority February 27, 2002; a continuation in the family that produced the '821 and '284 patents). In one line: the camera computes a white-balance correction adjustment from a combination of object-distance, zoom-value, and object-brightness information, so that auto white balance does not mis-correct when a large non-white subject (e.g., a face) fills the frame. Caveat on the patent list: the '310 complaint actually pleaded at least five counts — the '616 (electric camera/image sensor readout), '821 and '209 and '284 (the white-balance family), and '177 (electric camera) — and the associated declaratory-judgment case covered roughly eleven Maxell patents in total (adding the '604, '244, '088, '529, '102, and '229). The metadata's single-patent focus on the '209 is therefore narrower than the docket; I'm flagging that rather than treating '209 as the only patent ever pleaded.

Posture, venue, and significance. Maxell filed in the District of Delaware (Wilmington) on February 23, 2018 — seventeen days after Olympus filed a preemptive declaratory-judgment action there, Olympus Corp. v. Maxell, Ltd., No. 1:18-cv-00216 (D. Del., filed Feb. 6, 2018), seeking declarations of non-infringement of the '616, '821, '209, '284, and '229 patents. The two cases were assigned to the same judges and treated as associated: Judge Joseph F. Bataillon (D. Neb., sitting by designation in lieu of a vacant Delaware judgeship) with Magistrate Judge Sherry R. Fallon handling all pretrial and claim-construction matters (D.I. 7; D.I. 9 scheduling/Markman order, Mar. 27–28, 2018), later reassigned to Judge Maryellen Noreika (captions become "18-310-MN"). Delaware mattered for two reasons: Maxell is not a U.S. resident, so venue was proper under 28 U.S.C. § 1391(c) (as Olympus itself pleaded in the DJ case), and Maxell was already running its camera/phone campaign in that district (e.g., Nos. 17-1446 and 17-1447 against BlackBerry and BLU, filed Oct. 13, 2017), making it a natural and familiar forum and giving Olympus a race-to-the-courthouse advantage. The case is notable in three respects. First, it is a snapshot of the 2016–2018 Maxell assertion wave — Olympus's DJ complaint alleged Maxell had sued seven defendants since November 2016 and had pointed Olympus to those suits as leverage in license negotiations after an earlier Hitachi portfolio license expired. Second, it produced a parallel PTAB track: Olympus filed a batch of IPR petitions on June 20, 2018 (e.g., IPR2018-00904 on the '493, -00905 on the '760, -00907 on the '088, -00908/-00909 on the '604, -00910 on the '177), and those proceedings were terminated when the parties settled — Olympus moved to dismiss IPR2018-00907 with prejudice on November 28, 2018, citing the settlement agreement, with Maxell's consent. Third, the associated litigation yielded a citable § 101 ruling: on November 14, 2018, Judge Noreika denied Olympus's Rule 12(c) motion and held the '102 patent's dual-media/battery-conservation camera claims eligible at Alice step one as an improvement in a specific technology, distinguishing In re TLI Communications (Olympus Corp. v. Maxell, Ltd., No. 18-216 (D. Del. Nov. 14, 2018)). Both cases then ended via a December 18, 2018 stipulation of dismissal with prejudice of all claims and defenses in Nos. 18-216 and 18-310, with the Court retaining jurisdiction to enforce the settlement agreement — which is why the docket shows the case closed as "settled" rather than adjudicated.

Sourcing notes / where I'd hedge: (1) I did not locate a PTAB petition challenging the '209 itself within the 2018 Olympus IPR batch — the petitions I could verify target the '493, '760, '604, '177, and '088 — so I would not assert that the '209 was or wasn't petitioned without a P-TACTS check; (2) I could not confirm the complete IPR petition list (the -00906 number in the sequence is unverified); (3) the settlement amount and license terms are confidential and not public, so any figure would be speculation; and (4) the count-by-count patent list in the '310 complaint is reconstructed from Olympus's answer and the related DJ filings rather than a full PACER pull of D.I. 1 in '310, so the outer count numbering should be confirmed against the docket if precision matters.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case systematically, starting with the docket and any reported rulings.

Good foundation. Now let me pull the full docket and check for PTAB proceedings on the '209 patent.

Let me get the full 18-310 docket and confirm which patents Maxell asserted there.

Analytical framing

Two things must be understood before the timeline makes sense:

  1. This case was one half of a two-case set. Olympus beat Maxell to the courthouse. Olympus filed a declaratory-judgment action on 2018-02-06 (Olympus Corp. v. Maxell, Ltd., No. 1:18-cv-00216-JFB-SRF) seeking declarations of non-infringement of the '616, '821, '209, '284 and '229 patents. Maxell then filed this infringement action on 2018-02-23 (Maxell, Ltd. v. Olympus Corp., No. 1:18-cv-00310-JFB-SRF), pleading the same patents — the '209 as Count Three. The two cases were assigned to the same judges (Judge Joseph F. Bataillon, D. Neb., sitting by designation, with Magistrate Judge Sherry R. Fallon; later reassigned to Judge Maryellen Noreika, hence the later "-MN" caption), and the court entered a single combined discovery/Markman order in both. Strategically, the '209 claims were litigated in both dockets — Maxell affirmatively in 310, Olympus defensively in 216 — so a complete '209 analysis requires both.
  2. The '209 never reached the merits. No Markman, no summary judgment, no trial, no appeal. Resolution came by a with-prejudice settlement dismissal roughly ten months after filing.

Chronological developments

Date Event Source
2018-02-06 Olympus (Corp. + America) files D. Del. DJ action No. 18-216 against Maxell on '616, '821, '209, '284, '229. "'209" is the Third Claim for Relief: Olympus alleges its cameras (OM-D E-M1 Mark II, E-M5 Mark II, E-M10 Mark II, Pen-F, Pen E-PL8, Tough TG-3/TG-4/TG-5, Air A01) "lack white balance controlling means that utilize object distance detection, zoom value, and object brightness information." No. 18-216 D.I. 1, D.I. 3 (Patent Office reporting form)
2018-02-23 Maxell files the instant complaint (No. 18-310) under 35 U.S.C. § 271, jury demand. Recites Hitachi → Hitachi Consumer Electronics (2009) → Hitachi Maxell (2013) → Maxell chain of title. Personal jurisdiction/venue predicated in part on Olympus having "availed themselves of this Court's jurisdiction by filing a declaratory judgment" action. No. 18-310 D.I. 1
2018-03-05 Judge Bataillon oral order referring case to MJ Fallon for all discovery/scheduling/claim construction; MJ to issue R&Rs on dispositive matters. No. 18-310 D.I. 7
2018-03-13 Joint stipulation extends Olympus's response deadline to 2018-04-27 (first of several cooperative-scheduling signals). No. 18-310 D.I. 8, 9 (so ordered)
2018-03-27 (entered 3/28) Combined Order regarding discovery and Markman proceedings entered in both 18-216 and 18-310 — the

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel records for this case.

Good initial hits. Now let me verify individual attorneys' affiliations and firm bios, plus check for later docket activity/substitutions.

Bottom line

Maxell, Ltd. was represented by a two-tier team: Mayer Brown LLP as national/patent trial counsel (Chicago + Washington, DC), appearing pro hac vice, and Devlin Law Firm LLC (Wilmington, DE) as Delaware local counsel of record. There was one Delaware counsel substitution early in the case (Benjamin J. Schladweiler → Timothy Devlin) and no changes to the Mayer Brown side before the December 2018 dismissal.

1. Delaware local counsel of record — Devlin Law Firm LLC (Wilmington, DE)

Attorney Role Firm / office Note
Timothy Devlin (Del. Bar No. 4241) Local counsel of record (entered 4/2/2018); signed the dismissal stipulation for Maxell Devlin Law Firm LLC, 1306 N. Broom St., Wilmington, DE Prolific Delaware patent litigator; he was simultaneously Maxell's Delaware counsel in the parallel Maxell v. BlackBerry case (D. Del. C.A. No. 17-1446-JFB-SRF) and other Maxell matters.
James Gorman (Del. Bar No. 6284) Local counsel (co-signer on Maxell's filings) Devlin Law Firm LLC, Wilmington, DE Appears jointly with Devlin on Maxell's December 18, 2018 stipulation to dismiss, and in the companion DJ case.
Benjamin J. Schladweiler (Del. Bar No. 4601) Initial Delaware counsel at filing (Feb.–Apr. 2018); terminated per D.I. 10 Now Greenberg Traurig LLP, Wilmington, DE Filed the complaint/early papers and the March 12, 2018 joint stipulation to extend. His firm affiliation as of February 2018 is not confirmed in the sources I could retrieve (he is documented at Greenberg Traurig in later D. Del. dockets).

Docket grounding: D.I. 1 (Complaint, Feb. 23, 2018); D.I. 8 (Joint Stipulation to Extend Time, filed by Schladweiler, Mar. 12, 2018); D.I. 10, Notice of Substitution of Counsel re Maxell, Ltd. — entry of appearance of Timothy Devlin; Schladweiler terminated (Apr. 2, 2018); Stipulation to Dismiss at D.I. 57 in C.A. No. 18-216 (Dec. 18, 2018), signed "/s/ Timothy Devlin … James Gorman … DEVLIN LAW FIRM LLC … Attorneys for Maxell," dismissing the 18-310 infringement claims with prejudice.

2. National / lead patent counsel — Mayer Brown LLP (pro hac vice)

All entered via D.I. 5, Motion for Pro Hac Vice Appearance, granted by Magistrate Judge Sherry R. Fallon on 3/2/2018; PHV admissions docketed 3/2–3/8/2018.

Attorney Role Firm / office Note
Robert G. Pluta (Reg. No. 50,970) Lead counsel (Mayer Brown's lead; designated Lead Counsel for Maxell in the related PTAB proceedings) Mayer Brown LLP, 71 S. Wacker Drive, Chicago, IL Mayer Brown IP litigator whose practice centers on PTAB/IPR work; led Maxell's patent-owner defense in Olympus v. Maxell, IPR2018-00907 (U.S. Pat. 8,417,088) and the broader Maxell enforcement campaign.
Jamie B. Beaber Of counsel / PHV trial counsel (senior partner on the team) Mayer Brown LLP, 1999 K Street NW, Washington, DC Long-time Maxell outside patent counsel — appears for Maxell in Maxell v. Apple (E.D. Tex. 5:19-cv-00036) and other Maxell suits.
Kfir B. Levy Of counsel / PHV Mayer Brown LLP, Washington, DC Repeatedly appears with Beaber on Maxell matters (e.g., Maxell v. BlackBerry, D. Del.; Maxell v. Apple).
James A. Fussell, III Of counsel / PHV Mayer Brown LLP, Washington, DC Member of the Maxell trial team in the Olympus matters.
Tiffany A. Miller Of counsel / PHV Mayer Brown LLP, Washington, DC Patent litigator on the Maxell team.
Baldine B. Paul, PhD (Reg. No. 54,369) Of counsel / PHV (technical/electrical-engineering lead) Mayer Brown LLP, 1999 K Street NW, Washington, DC Mayer Brown bio expressly lists "representing plaintiff Maxell in patent enforcement action involving multiple patents relating to image sensor and digital camera technologies" (this case) and representing Maxell in the parallel DJ action, 1:18-cv-00216.
Alison T. Gelsleichter Of counsel / PHV Mayer Brown LLP, Washington, DC Named for Maxell in the November 2018 D. Del. § 101 opinion in the companion case.
Saqib J. Siddiqui (Reg. No. 68,626) Of counsel / PHV; also back-up counsel in IPR2018-00907 Mayer Brown LLP, 1999 K Street NW, Washington, DC PTAB-focused; designated back-up counsel in the related Olympus IPR.
Amanda Streff Bonner (Reg. No. 65,224) Of counsel / PHV Mayer Brown LLP, 71 S. Wacker Drive, Chicago, IL Patent litigator/PTAB practitioner (electrical & biomedical engineering focus); later part of the Mayer Brown team in Maxell v. Apple and other Maxell IPR work.

Names on the same PHV motion that I could not independently confirm as Mayer Brown in this research: William J. Barrow, Bryan C. Nese, Michael L. Lindinger, and Ilhwan ("Justin") Park. They were admitted PHV "for Maxell, Ltd." on 3/8/2018 but I did not locate a filing or firm page tying them to a specific office; treat their firm/office as unverified rather than assumed.

Also of note (PTAB only, not counsel of record in D. Del.): Michael J. Word (Mayer Brown, Chicago) was named back-up counsel for Maxell in IPR2018-00907.

3. Client-side / in-house

  • Tatsuya Yamamoto, Senior Manager at Maxell, Ltd., executed Maxell's power of attorney (June 1, 2018) appointing Mayer Brown in IPR2018-00907. He is a client representative, not an attorney of record in the district court case — no Maxell in-house attorney appeared on the 18-310 docket in the records I could access.

4. Role confirmation from the companion case

The Delaware Business Court Insider digest of the November 2018 § 101 opinion in Olympus Corp. v. Maxell, Ltd. (D. Del., Judge Noreika) lists, for Maxell: "Timothy Devlin and James Gorman, Devlin Law Firm LLC, Wilmington, DE; Jamie B. Beaber, Kfir B. Levy, James A. Fussell, III, Tiffany A. Miller, Baldine B. Paul, and Alison T. Gelsleichter, Mayer Brown LLP, Washington, DC; Robert G. Pluta, Mayer Brown LLP, Chicago, IL" — corroborating the local/national split and office locations above, and confirming Mayer Brown's DC and Chicago offices as the two centers of the team.

5. Sourcing caveats

  • The dockets I could reach (Justia, UniCourt, Docket Alarm) are incomplete/truncated — Justia's 18-310 docket was last retrieved April 2, 2018, and UniCourt's snapshot ends December 10, 2018. Entries after D.I. 10 in 18-310 are not displayed; the dismissal is documented through the joint stipulation filed at D.I. 57 in C.A. No. 18-216, which expressly covers "the claims for patent infringement brought by Maxell, Ltd. in Case No. 18-310-MN."
  • No sealing issue affects counsel identification: the appearances, PHV motions, and dismissal stipulation are all public. I found no sealed attorney-appearance orders.
  • The case caption shows "18-310-JFB-SRF" (Judge Bataillon, sitting by designation, and Magistrate Judge Fallon) through mid-2018, and "18-310-MN" (Judge Maryellen Noreika) by the December 2018 dismissal — consistent with a judicial reassignment, not a change of counsel.
  • I did not find Law360 or Reuters Legal coverage naming additional plaintiff counsel; firm bios (Mayer Brown, Baldine B. Paul) and the PHV papers are the strongest confirmations of individual roles. Any attorney listed above whose current firm/office may have changed since 2018 is described as of the 2018 record.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Bottom line

In No. 1:18-cv-00310-JFB-SRF, Olympus was the defendant, and it was represented by the same two-firm team that handled its mirror-image declaratory judgment action, Olympus Corp. v. Maxell, Ltd., No. 1:18-cv-00216-JFB-SRF (D. Del.): Shaw Keller LLP in Wilmington as Delaware/local counsel, with Perkins Coie LLP as lead trial/of counsel — principally William J. McCabe, Matthew J. Moffa and Thomas V. Matthew in New York, plus Kyle R. Canavera in San Diego. No Olympus in-house lawyer appears as counsel of record on any filing I could locate.

Important sourcing caveat: the free dockets for 18-310 stop at April 2, 2018 (Justia: "This docket was last retrieved on April 2, 2018"), i.e., before Olympus's answer deadline of April 27, 2018 (D.I. 8, joint stipulation extending defendants' response date; D.I. 9, Fallon order on discovery/Markman in the associated cases 18-216-JFB-SRF and 18-310-JFB-SRF). So the appearance itself in 18-310 is not visible on the free docket, and I could not pull a PACER docket sheet. The attribution below rests on (a) the counsel who entered appearances and filed for Olympus in the associated 18-216 action, and (b) the fact that the two cases were expressly "associated" as to the same judges, parties and accused camera products and were briefed by a single Olympus team. I have not verified a 18-310-specific entry of appearance; treat the local-counsel assignment in 18-310 as highly likely rather than docket-confirmed.

Delaware / local counsel — Shaw Keller LLP (Wilmington, DE)

Attorney Role Bar No. Note
John W. Shaw Local/lead Delaware counsel D. Del. No. 3362 Founding name partner of Shaw Keller, a Wilmington patent boutique; Delaware counsel of record for Olympus in the associated 18-216 action (signature block on Olympus's Rule 12(c) motion and brief, D.I. 18, 19).
Karen E. Keller Local counsel (named partner) D. Del. No. 4489 Shaw Keller name partner; listed Delaware counsel for Olympus in the 18-216 filings and in the Law.com digest of Judge Noreika's Nov. 14, 2018 opinion.
Nathan R. Hoeschen Local counsel D. Del. No. 6232 Shaw Keller; filed Olympus's pro hac vice motion (D.I. 5 in 18-216) — i.e., the attorney who actually opened the Olympus representation in Delaware.

Lead / national counsel — Perkins Coie LLP

Attorney Role Office Note
William J. McCabe Lead counsel (of counsel on D. Del. filings); USPTO Reg. No. 33,536 New York, NY (30 Rockefeller Plaza, 22nd Floor) Listed first in the "OF COUNSEL" block on Olympus's 18-216 Rule 12(c) papers; lead counsel for Olympus in its parallel PTAB IPRs against Maxell (e.g., IPR2018-00907 on U.S. 8,417,088 and IPR2018-00909 on U.S. 9,100,604), per the petitions' 37 C.F.R. § 42.10(b) powers of attorney.
Matthew J. Moffa Of counsel; USPTO Reg. No. 58,860 New York, NY Backup counsel on the same Olympus IPR petitions; named in the same 18-216 "of counsel" block.
Thomas V. Matthew Of counsel New York, NY Named in the 18-216 "of counsel" block on Olympus's motion and brief (D.I. 18, 19).
Kyle R. Canavera Of counsel San Diego, CA (11988 El Camino Real, Suite 350) Appears in the Olympus "of counsel" block on the 18-216 filings; not shown as a D. Del. pro hac vice admittee on the public docket.

No Olympus in-house attorney (e.g., from Olympus Corporation of the Americas legal department) appears on the public filings; the Rule 7.1 disclosure in 18-216 was signed by outside counsel at Shaw Keller (D.I. 4).

Cross-check / common confusion

The companion case inverts the roles: in No. 1:18-cv-00216, Olympus was the plaintiff, and Maxell's counsel were Devlin Law Firm LLC (Timothy Devlin, James Gorman — Wilmington) and Mayer Brown LLP (Jamie B. Beaber, Kfir B. Levy, James A. Fussell III, Tiffany A. Miller, Baldine B. Paul, Alison T. Gelsleichter in Washington, DC; Robert G. Pluta in Chicago; Saqib J. Siddiqui in Washington). Those names appear in the 18-310 docket too (D.I. 5, 10) — but as Maxell's counsel, not Olympus's. Mayer Brown also acted for Maxell in the Olympus IPRs and was Maxell's designated counsel in IPR2018-00907 (Pluta as lead, Word and Siddiqui as backup), so any name-matching exercise on these dockets will misfire if the case captions are not tracked carefully.

Confidence notes

  • Docket-confirmed: Shaw Keller (Shaw, Keller, Hoeschen) and Perkins Coie (McCabe, Moffa, Matthew, Canavera) acting for Olympus in 18-216; McCabe/Moffa as Olympus's lead/backup IPR counsel against Maxell; the 18-310 docket entries D.I. 7–10.
  • Inferred, not docket-confirmed: the 18-310-specific entry of appearance by these same attorneys. Given the April 27, 2018 answer deadline in 18-310 and that the free docket was last refreshed April 2, 2018, the appearance/answer documents are simply not in any free source I could reach; PACER or a Bloomberg Law/Lex Machina docket pull would be needed to cite the specific 18-310 appearance entry.
  • Not found: any Olympus in-house counsel of record; any separate Delaware firm engaged for 18-310; any published opinion in 18-310 itself (the substantive § 101 ruling in this dispute, Olympus Corp. v. Maxell, Ltd., Nov. 14, 2018, is in 18-216 — D. Del., Judge Noreika, denying Olympus's Rule 12(c) motion on the '102 patent).