Olympus Corporation et al. v. Maxell, Ltd.

I'll research this case systematically before drafting.

Good material. Now let me dig into the parallel suit, the IPRs, and the broader Maxell campaign.

Case Overview and Background

The parties and what they do. Olympus Corporation is a Japanese precision-optics and medical-device manufacturer headquartered in Tokyo (Shinjuku Monolith, 2-3-1 Nishi-Shinjuku); its co-plaintiff Olympus America Inc. is the New York corporation based in Center Valley, Pennsylvania that handles U.S. sales (18-216, D.I. 1 ¶¶5–11; D.I. 4 corporate disclosure identifying Olympus Corporation of the Americas as parent). At the time of suit Olympus was still a significant consumer-camera maker — the accused products are its mirrorless and compact cameras: 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 and Air A01 (D.I. 1 ¶11; Olympus's answer in the parallel suit adds Tough TG-3 and TG-5). Maxell, Ltd. is also a Japanese company (1 Koizumi, Oyamazaki, Otokuni-gun, Kyoto). Founded in 1961 as Maxell Electric Industrial, it is a genuine operating company in batteries, storage media, optical components and consumer electronics — not a classic shell NPE — but the patents here are not Maxell's own R&D: they travelled Hitachi → Hitachi Consumer Electronics (2009) → Hitachi Maxell (2013) → Maxell, Ltd. (assignment effective Oct. 1, 2017, USPTO reel 045142/0208). Maxell's 18-310 complaint ¶4 concedes the portfolio "relat[es] to, among others, televisions, tablets, digital cameras, and mobile phones," i.e., product areas it was monetizing by assertion rather than by manufacturing. In practice Maxell functioned as a hybrid operating-company licensor running an aggressive 2016–2019 licensing campaign, and Olympus's DJ complaint (¶10) counted seven Maxell defendants since November 2016, including the Delaware suits against BlackBerry (17-1446/17-1447, filed Oct. 13, 2017) that Maxell pointed to when pressing Olympus to "review" its litigated patents.

The patents and procedural posture. Olympus filed first, on February 6, 2018, in the District of Delaware (Wilmington), pleading declaratory judgment of non-infringement of five Maxell patents and invoking §§2201, 1331 and 1338(a) (D.I. 1; D.I. 3 Report to the Commissioner lists US 6,765,616 B1; 7,199,821 B2; 7,551,209 B2; 8,130,284 B2; 9,451,229 B2). The technical sketches: the '616 patent claims a solid-state imager's color-filter/pixel arrangement — Olympus pleaded its sensors lack filters passing three colors "cyclically … horizontally at [an] interval" with the same colors arranged vertically (D.I. 1 ¶18). The '821, '209 and '284 are a single Hitachi continuation family on automatic white-balance control that forms a correction value from object-distance, zoom and object-brightness inputs (D.I. 1 ¶¶23, 28, 33). The '229 covers video/still recording-and-reproducing in which thumbnails for both a moving picture and a still picture are stored in a directory that does not hold the full-size files (D.I. 1 ¶38); it is a member of the same '760/'897/'088/'529 family. Seventeen days later, on February 23, 2018, Maxell filed its own infringement suit, Maxell, Ltd. v. Olympus Corp., 1:18-cv-00310 (D. Del.), on a different set of camera patents — including the '493, '604, '177, '088 and '529 (each confirmed as asserted in 18-310 by Olympus's 2018 IPR petitions) — and then counterclaimed in 18-216 for infringement of the four white-balance/'616 patents plus six more: 8,059,177; 9,100,604; 8,599,244; 8,417,088; 7,457,529; and 8,478,102 (the '102) (18-216 D.I. 10 at 11–48, as described in the Nov. 14, 2018 opinion). The cases were consolidated for discovery/Markman purposes (D.I. 8). Because Delaware then had a judicial vacancy, the case was assigned to Judge Joseph F. Bataillon (D. Neb.), sitting by designation, with Magistrate Judge Sherry R. Fallon handling all discovery and claim construction short of summary judgment and Daubert (D.I. 6, Feb. 14, 2018; assignment Feb. 12, 2018); after her confirmation the matter was reassigned to Judge Maryellen Noreika, and the case numbers became 18-216-MN / 18-310-MN. Delaware mattered for two reasons: Maxell is not U.S.-resident, so venue was proper under

I'll research this case systematically, starting with the docket and party-level records.

Good foundation. Now let me pull the full docket, the November 2018 opinion, and the Olympus IPR petitions.

Now let me pull the full docket for 18-216 and check the IPR2018-00905 proceeding.

I'll start by searching for coverage of this case and the related Maxell campaign.

I found the IPWatchdog roundup. Let me verify its full text and look for other coverage of the ruling and settlement.

Press coverage: thin, trade-press only, and mostly indirect

Reporting specifically on Olympus Corp. v. Maxell, Ltd., C.A. No. 18-216 (D. Del.) is sparse. I found no Reuters, Bloomberg, Law360, Ars Technica, The Verge, or other mainstream coverage of the filing, the November 2018 § 101 ruling, or the December 2018 settlement, and no outlet appears to have reported any damages figure, license terms, or settlement amount for this case — consistent with the fact that the parties' agreement was filed under seal/business-confidential treatment. The coverage that exists is (i) a Bloomberg Law practitioner summary of the one substantive merits ruling, (ii) a Delaware Business Court Insider case digest, and (iii) a 2020 IPWatchdog filings roundup that name-checks Olympus only as one target in Maxell's broader campaign. Anyone citing "press coverage" of this case should know it is essentially a closed, settled case that never drew national attention.

The November 14 2018 § 101 ruling — the only merits decision — got trade-press treatment. Bloomberg Law's IP Law Daily (Joseph Arshawsky, J.D., published Nov. 15, 2018) reported that Judge Noreika denied Olympus's motion for judgment on the pleadings that claims 1–5 of U.S. Patent No. 8,478,102 (the '102 patent, "Information Recording/Play-Backing Apparatus") were ineligible under § 101, holding the claims were directed not to "conserving limited resources" or "conserving battery power" but to "an improvement in the functioning of a specific technology." The article quotes the opinion that "Claim 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," and notes Maxell's argument that a dual-medium camera with a controller suppressing power to one medium under specified conditions made the camera "feasible and usable." The Delaware Business Court Insider case digest (Case No. D68369, published 2018-11-28) summarized the same holding identically — the patent "was not directed to patent-ineligible subject matter where it addressed technological improvements to enable camera with recording/play-back capabilities that consumed less power" — and is the source for the full counsel caption (Shaw Keller/Perkins Coie for Olympus; Devlin Law Firm/Mayer Brown for Maxell) used in the earlier sections of this analysis. Notably, the Bloomberg Law write-up describes Maxell as having "asserted against Olympus counterclaims for infringement of 10 patents, including the '102 patent" — matching the record — but it then loosely calls Olympus "the defendants" and frames the denial as "with respect to Maxell's infringement assertions," a characterization that blurs the posture: Olympus was the declaratory-judgment plaintiff and the movant, and the ruling merely kept Maxell's counterclaims alive. That is a reporting gloss, not a court holding.

The 2020 IPWatchdog roundup is the cited article, but it is about Maxell's Apple fight, not Olympus. IPWatchdog published the Jonathan Stroud "Patent Filings Roundup" on 2020-08-19 under the headline referencing "PTAB Skips Maxell IPRs." Its Maxell section ("Maxell (Hitachi) Gets a Discretionary Denial Assist") states that Maxell "has for years been launched a series of complaints over the years against companies like Fandango, Blackberry, BLU, CinemaNow, ASUSTek, Olympus, ZTE, and Hisense," culminating in a 2019 Eastern District of Texas suit against Apple and a brand-new ITC/Western District combination filed that month against Apple on five related patents. The "skipped IPRs" are Apple's IPR2020-00407, -408 and -409 against U.S. Patents 6,748,317, 6,430,498 and 6,580,999, which the Board denied under the NHK Spring/Fintiv factors because Judge Gilstrap had set (and once moved) a December 2020 trial date and refused a stay — with the Board declining to address Apple's policy arguments because Fintiv and NHK were precedential. Olympus appears in that piece only as a name in a list of prior Maxell defendants; the roundup says nothing about 18-216, the '102 ruling, or the settlement. Its value here is corroborative context — that Maxell ran a sustained multi-front assertion campaign in which Olympus was one of at least seven targets — and it independently firms up the campaign narrative described in the case-overview section.

Where reporting departs from or falls short of the record. The press record is materially thinner than the docket: (1) no outlet I located reported the December 18, 2018 stipulation dismissing both 18-216 and 18-310 with prejudice while the Court retained jurisdiction to enforce the settlement, and no outlet reported the terms — in the parallel PTAB proceeding, the Board's December 2018 dismissal order in IPR2018-00907 granted the parties' joint request to keep the settlement agreement confidential under § 317(b), which explains the absence of any reported number; (2) Maxell's own side publicized the case only through law-firm bios — Mayer Brown's profile for Baldine B. Paul, PhD lists "Olympus Corporation and Olympus America Inc. v. Maxell, Ltd. (D. Del. 2018, case no. 1:18-00216)" as a representative matter involving "image sensor and digital camera technologies" — rather than through press statements; and (3) a metadata wrinkle worth flagging: the case metadata provided to me shows termination on 2018-11-14, the date of the opinion, whereas the dismissal stipulation is dated 2018-12-18 (D.I. 57). The press summaries track the November ruling only and therefore give the misleading impression that the case ended with Maxell's win on the '102 patent. In fact the '102 ruling was the last merits event before a global, confidential settlement.

Sources

• IN THE UNITED STATES DISTRICT COURT
• 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
• Baldine B. Paul, PhD | Nuestra Gente | Mayer Brown - Consejero
• 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)
• Baldine B. Paul, PhD | Advogados | Mayer Brown - Counsel
• Search | Delaware Business Court Insider - Case Digests
• Olympus Corp. v. Maxell, Ltd. - From Casetext: Smarter Legal Research
• Jonathan Stroud - District court patent filings and filings with the Patent Trial and Appeal Board (PTAB) were relatively subdued this week, with ...
• Courts Archives - Posts in Courts
• patent Archives - Posts Tagged: "patent"

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

Strong leads. Let me verify docket appearances and attorney profiles.

Let me pull the complaint signature block and full docket via RECAP/CourtListener, plus attorney bios.

Plaintiff-side counsel of record — Olympus Corp. & Olympus America Inc. v. Maxell, Ltd., C.A. No. 18-216-JFB-SRF (D. Del.)

Bottom line: Plaintiffs were represented by a two-firm structure typical of District of Delaware practice — a Delaware boutique (Shaw Keller LLP) as counsel of record/local counsel, and Perkins Coie LLP as the substantive/out-of-state team, appearing in the "OF COUNSEL" block. Six attorneys are identified in the record; no in-house Olympus attorney entered an appearance, and nothing on this docket was sealed as to counsel.

Plaintiffs' counsel

Docket grounding

• D.I. 5 (filed 2/7/2018) — "MOTION for Pro Hac Vice Appearance of Attorney William J. McCabe, Matthew J. Moffa, and Thomas V. Matthew," filed by Nathan Hoeschen on behalf of both Olympus entities; SO ORDERED by Judge Fallon 2/14/2018 (D.I. 6 oral order referring case to Magistrate Judge Fallon issued the same day); PHV counsel added to CM/ECF noticing 2/28/2018. (Justia docket)
• D.I. 18 & 19 (July 2, 2018) — Plaintiffs' Motion for Judgment on the Pleadings and supporting brief on § 101 invalidity of the '102 Patent, signed for Plaintiffs with the Perkins Coie attorneys in the "OF COUNSEL" block (New York and San Diego addresses as listed above). (D.I. 18)
• D.I. 57 (Dec. 18, 2018) — Stipulation of dismissal with prejudice of both 18-216 and 18-310, with the Court retaining jurisdiction to enforce the settlement agreement; consistent with the case being reported closed after the Nov. 14, 2018 opinion (Noreika, J.) denying Olympus's Rule 12(c) motion. (Opinion, 18-216)
• Counsel listing corroborated by the Delaware Business Court Insider digest of the Nov. 14, 2018 opinion, which names Shaw, Keller, and Hoeschen (Shaw Keller, Wilmington); McCabe, Moffa, and Matthew (Perkins Coie, New York); and Canavera (Perkins Coie, San Diego) for plaintiffs. (Law.com DBCI case digest)

Practical notes and caveats

• "Lead" vs. "local": D. Del. Local Rule 83.5(d) requires the Delaware firm to be the CM/ECF filer of record, so Shaw Keller is the formal counsel of record. The designation of Perkins Coie as "OF COUNSEL" in the brief signature block is the local formatting convention for out-of-state counsel and should not be read as demoting their substantive role — the only contested merits motion in the case (the § 101 challenge to the '102 Patent) was briefed and argued from the Perkins Coie side. The record does not contain a formal designation of "lead trial counsel," so any label of "lead" is inferential.
• Canavera: he is listed as plaintiffs' counsel in the contemporaneous DBCI digest and signed the July 2018 brief, but the pro hac vice motion on this docket (D.I. 5) covers only McCabe, Moffa, and Matthew. It is possible he was admitted under a separate motion not captured in the free docket extracts I could access, or that he participated without formally appearing. I'd verify against the full PACER docket before stating he was admitted in 18-216. His USPTO registration number is confirmed from public PTAB filings.
• Bios: The Shaw Keller profiles are well-sourced (firm site, IAM Patent 1000, Chambers, BTI, Super Lawyers). I could not locate reliable individual biographies for McCabe, Moffa, or Matthew, and I have deliberately not characterized their case history rather than guess. Canavera's PTAB practice (e.g., backup counsel in IPR2023-00030 and IPR2024-00796) is documented in USPTO filings.
• Counterpart case: Maxell's mirror suit, Maxell, Ltd. v. Olympus Corp., C.A. No. 18-310-JFB-SRF, was coordinated with this one (joint discovery/Markman order, D.I. 8, entered in both cases 3/27/2018). The Olympus side in 18-310 is not captured in the docket extracts I retrieved, so I have not assumed the identical team.

I'll research the docket and firm records for Maxell's counsel.

Now let me pin down the docket appearances in 18-216 specifically (D.I. 10 answer, any PHV motions) and the two Devlin attorneys' backgrounds.

Let me verify who signed Maxell's key filings in No. 18-216 and confirm Schladweiler's firm at the time.

Bottom line

In No. 1:18-cv-00216 (Olympus's DJ action), the defendant is Maxell, Ltd., and it was represented 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 the national IP litigation team appearing with it. Only two attorneys ever signed as "Attorneys for Maxell" on the Delaware papers — Timothy Devlin and James Gorman — but the Mayer Brown team is identified as Maxell's counsel in the November 2018 case digests and appears formally (pro hac vice) in the companion case. There was one earlier Delaware appearance by Benjamin J. Schladweiler, who was substituted out on 2018-04-02.

A caveat on the question's framing: because Olympus filed first as declaratory-judgment plaintiff, "defendant" here means Maxell. If what is intended is the infringement case (Maxell, Ltd. v. Olympus Corp., No. 1:18-cv-00310-MN), the defendants were Olympus and their counsel were Shaw Keller LLP and Perkins Coie LLP — I cross-reference that at the end rather than blend the two.

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Maxell, Ltd. — counsel of record in No. 18-216

Delaware / local counsel of record: Devlin Law Firm LLC

National/lead trial counsel: Mayer Brown LLP

All of the following are identified as Maxell's counsel in the 2018-11-28 Delaware Business Court Insider case digest (No. D68369) and/or the 2018-11-15 Bloomberg Law IP Law Daily report, and are the same Mayer Brown group that entered pro hac vice for Maxell in No. 18-310 (motion at D.I. 5, So Ordered 2018-03-02; PHV notices entered 2018-03-02/03-08).

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How these appearances are grounded (and where the record is thin)

• Maxell's appearance in this case is documented, but not by a clean PHV order. The free docket snapshots