Olympus Corp. v. Maxell, Ltd.

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

Key insight already: the '897 patent may not have been asserted in the DJ complaint itself. Let me dig into that and the companion infringement suit.

Now let me confirm the precise patent lists in each suit and the judge/opinion details.

Overview & Background

The parties. Olympus Corp. v. Maxell, Ltd., No. 1:18-cv-00216 (D. Del.), was a declaratory-judgment action brought by Olympus Corporation (Tokyo), the optics and medical-imaging conglomerate, together with its U.S. sales subsidiary Olympus America Inc. (Center Valley, Pa.), against Maxell, Ltd. (Oyamazaki, Kyoto) — formerly Hitachi Maxell, Ltd. Both are Japanese operating companies, not a university or a classic shell NPE, but their postures were asymmetric. Olympus was the accused customer: its consumer camera line (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, Air A01) was the accused instrumentality. Maxell is a maker of storage media, batteries, projectors and components that, as the complaint itself recounts, inherited Hitachi's consumer-electronics patent portfolio through a 2009 transfer to Hitachi Consumer Electronics, a 2013 transfer to Hitachi Maxell, and a later reorganization into Maxell, Ltd. — a portfolio it "actively enforces ... through licensing and/or litigation." Olympus's complaint described the trigger: the parties had a prior Hitachi portfolio license that expired; Maxell proposed materially less favorable renewal terms, accused Olympus products, and — when Olympus proposed portfolio terms — responded by pointing to its pending U.S. camera-patent suits and telling Olympus to "review" them (D.I. 1 ¶¶ 9–12; complaint text). Maxell was in the middle of a multi-front assertion campaign launched in November 2016 against Huawei, BlackBerry, BLU, ZTE and others.

What was actually asserted — and the '897 caveat. The DJ complaint sought declarations of non-infringement on five patents: the '616 patent (U.S. 6,765,616) on color-filter-array/solid-state image-sensor color filter layout (Olympus argued its sensors lack the claimed "cyclically appear horizontally at [an] interval ... and the same colors arranged vertically" filter); the '821, '209 and '284 patents (7,199,821; 7,551,209; 8,130,284), a white-balance-control family that adjusts WB using object distance, zoom and object brightness; and the '229 patent (9,451,229) on recording moving (MPEG) and still (JPEG) pictures with paired thumbnail images stored in a common directory that does not hold the full-size files (D.I. 1 ¶¶ 16–38; D.I. 3 Report to Commissioner). Maxell answered with counterclaims on ten patents (D.I. 10): the '616, '821, '209 and '284, plus U.S. 8,059,177, 9,100,604, 8,599,244, 8,417,088, 7,457,529 and 8,478,102 ('102, "Information Recording/Play-Backing Apparatus" — a dual-media camera whose controller suppresses power to one recording medium in imaging mode and gates dubbing on battery level). The '897 patent (7,995,897, "Video recording and reproducing method, and video reproducing apparatus and method," Takahashi & Shiokawa) was not pleaded as a claim in this case. It appears in the complaint only in ¶ 10, as a patent Maxell had asserted against third parties in D. Del. Nos. 17-1446/-1447 and as the parent of the asserted '229 patent. Olympus nonetheless challenged it at the PTAB: the '897 is a continuation of the '529 patent and the parent of the '088, which is the parent of the '229 — i.e., the same priority chain (Japanese App. 11-189868) as two patents Maxell did assert. Olympus's IPR petition describes the '897 as claiming (1) recording a still image in two encodings, one compatible with a moving-picture playback device and one PC-compatible, and (2) storing moving- and still-picture thumbnails in a common encoding (IPR2018-00906 petition, May 18, 2018/download-documents?artifactId=qtWn4IDDzrdj3aUmB2R4KbZaxhYXPsQ8ZVa7-2NVFMFrwyTxBTczRVA

Bottom line up front — a necessary correction to the case metadata

The 7,995,897 ("'897") linkage flagged as "probable but not established" should be downgraded, not confirmed. The '897 patent was never pleaded in Olympus Corp. v. Maxell, No. 1:18-cv-00216 (D. Del.). Olympus's complaint (2018‑02‑06) sought declaratory judgments on five other Maxell patents ('616, '821, '209, '284, '229), and the '897 appears in the complaint only as background — cited as a patent Maxell had asserted against other defendants in Nos. 17‑1446 and 17‑1447, and noted as the parent-family patent to the '229 patent. See Compl. ¶ 10 (D.I. 1) ("U.S. Patent No. 7,995,897 (not identified in this complaint, but to which the '229 Patent is related)").

The genuine '897 tie to this case runs through two other channels: (1) the companion infringement suit Maxell filed two weeks later, No. 1:18‑cv‑00310 (D. Del., filed 2018‑02‑23); and (2) the parallel PTAB track, where Olympus challenged the '897 in IPR2018‑00906 — a proceeding terminated by the same settlement that ended the district court cases. If the analyst's database is keying on '897, the "patent at issue" metadata for 18‑216 is inaccurate; the correct patents-at-issue set is the ten listed in § II below.

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I. Verification note on docket completeness

The public dockets I could reach (Justia, Docket Alarm) were last harvested in 2018 (Justia: 2018‑11‑14; Docket Alarm for 18‑310: 2018‑04‑02). The chronology below is therefore reconstructed from three independent anchors: the docket snapshots, the one merits opinion (D.I. 54, 2018‑11‑14), and the stipulation of dismissal (D.I. 57, dated 2018‑12‑18). I found no record of a Rule 12(b) motion to dismiss, a § 1404 transfer motion, a stay-pending-IPR motion, a Markman hearing/order, or any summary judgment motion in 18‑216. Where a step is simply absent from the record rather than affirmatively denied, I say so.

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II. Chronological developments

2018‑02‑06 — Complaint (DJ action). Olympus Corp. and Olympus America Inc. filed a five-count declaratory-judgment action against Maxell, Ltd. (successor to Hitachi Maxell). Patents: '616 (6,765,616, "Electric Camera" — CFA/color-filter-array theory); '821 and '209 (7,551,209) and '284 (8,130,284) (auto white balance using object distance, zoom, and brightness); and '229 (9,451,229) (thumbnail indexing for mixed moving/still files). Accused Olympus products: OM‑D E‑M1 Mark II, E‑M5 Mark II, E‑M10 Mark II, Pen‑F, Pen E‑PL8, Tough TG‑4, Air A01. Jurisdiction was premised on Maxell's litigation campaign (seven defendants since November 2016) and a 2017‑05‑17 Hitachi Maxell letter.

2018‑02‑12 / 02‑14 — Judicial assignment. Case assigned to Judge Joseph F. Bataillon (D. Neb., sitting by designation) with Magistrate Judge Sherry R. Fallon; Fallon took all discovery, scheduling, and claim construction, with R&Rs on dispositive matters. Later reassigned to Judge Maryellen Noreika (case renumbered 18‑216‑MN); the exact reassignment date is not in the snapshots I retrieved, but Judge Noreika authored the November 2018 opinion.

2018‑02‑23 — Mirror suit filed. Maxell sued Olympus in No. 1:18‑cv‑00310 (D. Del.), Count I asserting the '616 patent, and (per Maxell's PTAB mandatory notice) also asserting the '088 patent.

2018‑03‑13 — Answer deadline extended to 2018‑04‑27 by joint stipulation (D.I. 7).

2018‑03‑27/28 — Coordinated scheduling order on discovery and Markman in both 18‑216 and 18‑310. This is the only scheduling event of record; it confirms the cases were being run in tandem.

2018‑04‑02 — Counsel change for Maxell: Timothy Devlin (Devlin Law Firm) replaced Benjamin Schladweiler; Mayer Brown (Beaber, Levy, Fussell, Miller, Paul, Gelsleichter, Pluta, Siddiqui) appeared pro hac vice. Olympus was represented by Shaw Keller (Shaw, Keller, Hoeschen) and Perkins Coie (McCabe, Moffa, Matthew, Canavera).

2018‑04‑27 — Maxell's answer and counterclaims (D.I. 10). This converted the DJ action into a full infringement case. Maxell counterclaimed infringement on four of the five DJ patents ('616, '821, '209, '284; D.I. 10 at 11–25) plus six additional patents ('177/8,059,177; '604/9,100,604; '244/8,599,244; '088/8,417,088; '529/7,457,529; and the '102/8,478,102), for ten patents total (D.I. 10 at 26–48; reported as "10 patents" in VitalLaw's IP Law Daily, 2018‑11‑15). Note: the '229 patent appears as a DJ count in the complaint but is not described as counterclaimed in the opinion's recitation — an unresolved discrepancy, possibly because it was pursued in 18‑310 instead.

2018‑05‑18 — Olympus answered the counterclaims (D.I. 16, 17).

2018‑05/06 — Olympus opens the PTAB front. Olympus (with Olympus Corporation of the Americas and Olympus America Inc. as co-petitioners) filed a coordinated wave of IPR petitions against the Maxell portfolio. The '897 petition (IPR2018‑00906) is dated 2018‑05‑18 and relied on Ishikawa (JP 10‑108133), Peters (6,370,274), Takaichi (JP 10‑164483), and a Rabbani declaration, and it pointedly cited the claim construction order from Maxell v. Huawei, No. 5:16‑cv‑178 (N.D. Cal. Jan. 31, 2018). At least one petition in the wave was filed 2018‑06‑20.

2018‑07‑07 — The only substantive pre-trial motion (D.I. 18). Olympus moved for judgment on the pleadings under Rule 12(c), attacking claims 1–5 of the '102 patent as ineligible under § 101 (Alice step one: "conserving limited resources"/"conserving battery power"). This was a targeted strike at Maxell's most vulnerable counterclaim patent rather than a case-wide dispositive motion.

2018‑11‑14 — Opinion denying the § 101 motion (D.I. 54). Judge Noreika held the '102 claims directed to "an improvement in the functioning of a specific technology — not ... an abstract idea that is merely implemented on generic computers or machinery," distinguishing TLI Communications and aligning with Enfish, Core Wireless, Visual Memory, and Aatrix. The court also rejected the argument that dependent claims 2–5 (display and media-type limitations) could supply abstractness, and — because it resolved step one in Maxell's favor — never reached Alice step two. Reported at Olympus Corp. v. Maxell, Ltd., No. 18‑216‑MN (D. Del. Nov. 14, 2018), https://www.ded.uscourts.gov/sites/ded/files/opinions/18-216.pdf; digested at 2018‑11‑28 Delaware Business Court Insider (No. D68369) and VitalLaw IP Law Daily (2018‑11‑15). This is the sole reasoned merits ruling in the litigation, and it favored Maxell.

No Markman, no summary judgment, no trial. Discovery never reached expert reports, dispositive motions, Daubert, or pretrial order practice. There was also no motion to stay the district court case pending the IPRs — a notable strategic choice, given

I'll search several angles to locate press coverage of this case.

Initial results are mostly primary court records. Let me search specifically for press/analyst coverage.

Let me dig deeper for trade press coverage on the key rulings and the settlement.

Press coverage assessment: very thin — one trade-press item, no mainstream or litigation-trade reporting

I searched the case caption, the party names in combination, the asserted patent numbers ('616, '821, '209, '284, '229), the '897 patent, and the December 2018 settlement across general web indexes. I could not find any article from Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, IPWatchdog, Patently-O, EFF Deeplinks, JD Supra, or any mainstream outlet covering this case. Searches keyed to "Olympus" + "Maxell" + "patent" returned almost exclusively primary materials — the D. Del. docket, the Nov. 14, 2018 opinion, PTAB papers, and attorney-biography pages — rather than journalism. The only genuine press/analysis item located is a same-week trade write-up of the §101 ruling.

That item is an IP Law Daily piece bylined Joseph Arshawsky, J.D. (published on Wolters Kluwer's VitalLaw platform, dated 2018-11-15), headlined "PATENT—D. Del.: Claims for camera recording/play-back apparatus directed to specific improvements, not abstract idea." It reported that Judge Maryellen Noreika denied the plaintiffs' motion for judgment on the pleadings as to U.S. Patent No. 8,478,102, holding that claims 1–5 were not directed to the abstract idea of "conserving limited resources" or "conserving battery power" but to "an improved camera" — a dual-storage-medium camcorder whose controller governs power to the recording media by operating mode. IP Law Daily framed the holding as turning on the specification's own recitation of the prior-art battery-drain problem, quoting the court's statement that "[c]laim 1 of the '102 patent is directed to a specific type of technology—a recording/play-back apparatus—with features designed to improve upon the prior art." The article is a straightforward report of the opinion (D.I. 54, 2018 WL-era citation "C.A. No. 18-216 (MN)"), with no analyst commentary, no industry reaction, and no executive statements. It contains one technical slip: it calls Olympus "the defendants" for purposes of the §101 motion even though Olympus was the declaratory-judgment plaintiff — an artifact of the fact that the '102 patent came in via Maxell's counterclaims.

Notably absent from any press account: damages figures, settlement terms, or market impact. None appear anywhere in the public reporting, and that is consistent with the record. Maxell's counterclaims did not produce a reported damages demand in the sources I found; the case ended by a stipulation of dismissal filed 2018-12-18 dismissing both C.A. No. 18-216 and the parallel infringement suit Maxell filed, C.A. No. 18-310, with prejudice "pursuant to an agreement of the parties," with the court retaining jurisdiction to enforce that (undisclosed) agreement. The accompanying PTAB termination order in IPR2018-00904, -00906, -00908, -00909, -00910, and -00911 confirms the parties filed a Patent License Agreement (Ex. 1018) and successfully moved to keep it business confidential under 35 U.S.C. § 317(b) — so the royalty/license economics of the Olympus–Maxell peace are sealed on both the litigation and PTAB sides. Any press figure for a "settlement value" would be speculation, and I found none.

On the '897 linkage flagged in the case summary — the reporting does not support it, and the record affirmatively cuts against treating '897 as a patent-in-this-case. U.S. Patent No. 7,995,897 is not among the patents for which Olympus sought declaratory judgment in D.I. 1 (the complaint covers the '616, '821, '209, '284, and '229 patents only), and the court's opinion recites that same list. The '897 patent surfaces in this record in two incidental ways: the complaint's ¶10 notes that '897 was asserted by Maxell in the earlier D. Del. suits against BlackBerry (C.A. Nos. 17-1446/17-1447) and describes the '229 patent as "related" to it; and Olympus separately petitioned for IPR of '897 claims 1–12 on 2018-05-18, filed as IPR2018-00906, which was dismissed with the rest as part of the settlement. Docket Alarm's patent:(7995897) tag therefore looks like an over-inclusive index (it captures the related-family/parallel-IPR footprint, not an asserted claim in 18-216). Practically: '897 was a bargaining chip in the same portfolio dispute and was the subject of a fully drafted Olympus invalidity challenge that was never instituted, but it was never pleaded in this action.

Gaps a reader should know about. The only contemporaneous account of the Nov. 14 opinion is the IP Law Daily summary; there is no second outlet to check it against, and no outlet reported on Maxell's counterclaim theory, the claim-construction schedule, or the settlement. Defense-side characterizations appear only in attorney biographies — e.g., Mayer Brown's profile of Baldine B. Paul lists both 18-216 (as DJ defense) and 18-310 (as Maxell's affirmative case) as representations, confirming Maxell's counsel lineup but offering no commentary. Those bios are self-reported marketing, not reporting, and I would not treat them as independent corroboration of anything beyond representation. Given the absence of coverage, no "accounts differ" analysis is possible on the merits; the only divergence I can document is the IP Law Daily article's party-role slip.

Sources

• IN THE UNITED STATES DISTRICT COURT
• Complaint analysis | 1:18-cv-00216 | Olympus Corp v. Maxell Ltd | Ex Parte
• IN THE UNITED STATES DISTRICT COURT
• IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE
• Search court records on patent:(7995897)
• IN THE UNITED STATES DISTRICT COURT
• Olympus Corporation et al v. Maxell, Ltd. - This case was last updated from U
• Olympus Corporation et al v. Maxell, Ltd.
• Baldine B. Paul, PhD | People | Mayer Brown - Counsel
• Olympus Corporation et al v. Maxell, Ltd., No. 1:2018cv00216 - Document 54 (D. Del. 2018) - Olympus Corporation et al v. Maxell, Ltd., No. 1:2018cv00216 - Document 54 (D. Del. 2018)
• UNITED STATES PATENT AND TRADEMARK OFFICE
• UNITED STATES PATENT AND TRADEMARK OFFICE

I'll research the counsel of record for Olympus Corp. in this D. Del. case.

Good foundation. Now let me verify the individual attorneys' roles, firms, and experience.

Now let me verify the Delaware local counsel and confirm details.

Counsel of record for the plaintiffs

Threshold correction to the case summary: the plaintiffs are two entities — Olympus Corporation (Japan) and Olympus America Inc. — not "Olympus Corp." alone. The caption is Olympus Corporation and Olympus America Inc. v. Maxell, Ltd., C.A. No. 18‑216 (MN) (D. Del.). See D.I. 1; Olympus Corp. v. Maxell, Ltd., 2018 WL 6617202 (D. Del. Nov. 14, 2018) (Noreika, J.) (Mem. Op., D.I. 54).

Both groups below appeared on the same side; the division is Delaware counsel vs. pro hac vice counsel.

Delaware counsel of record — Shaw Keller LLP (Wilmington)

Pro hac vice / merits counsel — Perkins Coie LLP

Sourcing and gaps

• Admissions: D.I. 5 (Motion for Pro Hac Vice, filed Feb. 7, 2018, by N. Hoeschen) and the SO ORDERED granting it (Judge Fallon, Feb. 14, 2018) cover McCabe, Moffa and Matthew; Justia's docket confirms those three "added for electronic noticing" on Feb. 28, 2018. Delaware counsel must be the CM/ECF filers under D. Del. L.R. 83.5(d).
• Verification of the roster: the Nov. 28, 2018 Delaware Business Court Insider digest of the § 101 ruling lists plaintiffs' counsel exactly as: "John W. Shaw, Karen E. Keller, and Nathan R. Hoeschen, Shaw Keller LLP, Wilmington, DE; William J. McCabe, Matthew J. Moffa, and Thomas V. Matthew, Perkins Coie LLP, New York, NY; Kyle R. Canavera, Perkins Coie LLP, San Diego, CA." This matches the D.I. 54 opinion caption and the D.I. 57 stipulation signature blocks. (law.com digest; D.I. 54, Justia)
• In-house counsel: no Olympus in-house attorney entered an appearance on this docket that I could locate. Do not assume one.
• Nothing is sealed as to counsel — the appearances are public — but the docket I could retrieve stops effectively at the December 2018 dismissal, so any later substitution or notice of withdrawal (had the case continued) isn't visible to me.
• Appearances have terminated: the case and the companion infringement suit (18‑310‑MN) were dismissed with prejudice by stipulation dated Dec. 18, 2018 (D.I. 57), so this is a historical counsel roster, not a live one.

Built onto the earlier sections — two corrections

1. The '897 patent was not pleaded in this case. The complaint sought declaratory judgment only on the '616, '821, '209, '284 and '229 patents, and it expressly flagged the '897 as "not identified in this complaint, but to which the '229 Patent is related" (Compl. ¶ 10). The '897 entered the picture through Olympus's IPR petitions, IPR2018‑00904 through ‑911, filed May 18, 2018 — IPR2018‑00906 targeted the '897, with William McCabe as petitioner's counsel and Robert G. Pluta (Mayer Brown) for Maxell; it terminated Dec. 26, 2018. So "linkage to '897 unconfirmed" should be restated as: the '897 was never at issue in the district court; the linkage is via Olympus's PTAB challenge.
2. Docket Alarm's patent-number search is a false-positive trap here — it surfaces this case under patent:(7995897) even though the '897 appears nowhere in the pleadings. The district-court case and the IPR should be described as parallel proceedings, not as the same dispute.

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

Good initial hits. Let me dig into the docket's pro hac vice admissions and each attorney's background.

Counsel of record for Defendant Maxell, Ltd. — Olympus Corp. v. Maxell, Ltd., No. 1:18-cv-00216-JFB-SRF (D. Del.)

Bottom line: Maxell was defended by a two-tier team — Devlin Law Firm LLC (Wilmington) as Delaware/local counsel of record, and Mayer Brown LLP (Washington, DC and Chicago) as national/lead patent counsel. Both firms signed the December 18, 2018 stipulation of dismissal (D.I. 57), which is the best single confirmation of who was "of record" for Maxell at the close of the case. No attorney information is sealed; Maxell's in-house counsel never appeared of record.

Note on sourcing: the roster below is corroborated by (a) the D.I. 57 signature blocks (Devlin Law Firm and Shaw Keller), (b) the Law.com Delaware Business Court Insider digest of Judge Noreika's November 14, 2018 § 101 opinion, which lists counsel for both sides, and (c) Mayer Brown attorney bios. I could not retrieve the individual pro hac vice orders from PACER, so the precise D.I. numbers for each Mayer Brown admission are not verified.

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

2. National / lead patent counsel — Mayer Brown LLP

Related-proceeding only (NOT confirmed on the district court docket): Mayer Brown's Michael Word and Saqib J. Siddiqui signed the December 26, 2018 PTAB termination order caption as counsel in Olympus's related IPRs (IPR2018-00904/906/908/909/910/911). They should not be listed as district-court counsel of record without a PACER check.

3. In-house counsel

None identified. Maxell, Ltd. (Kyoto, Japan; successor to Hitachi Maxell) did not have in-house counsel enter an appearance in this action, and no in-house lawyer is named in the pleadings or the opinion digests.