Jacob Schindler

China’s top patent owner Huawei has continued its third-party acquisition efforts with the recent pick-up of seven US patent grants from Japanese company Hitachi. Several weeks on from that transaction, it doesn’t look like the apparent patent sale was part of a larger deal to settle the US legal tussle between the two companies, which is ongoing in the Eastern District of Texas. Instead it underline’s the Japanese company’s all-of-the-above approach to monetising patents as its business is transformed.

According to USPTO records, Huawei took ownership of the Hitachi portfolio, which appears largely related to storage systems and controllers, in July. If there were any non-US rights included in the deal, they weren’t mentioned on the USPTO recordal documents. The patents changing hands were:

  • 9,361,177 – Methods and apparatus for managing error codes for storage systems coupled with external storage systems  
  • 8,738,963 – Methods and apparatus for managing error codes for storage systems coupled with external storage systems       
  • 8,627,038 – Storage controller and storage control method 
  • 8,180,989 – Storage controller and storage control method
  • 8,407,517 – Methods and apparatus for managing error codes for storage systems coupled with external storage systems 
  • 8,219,774 – Storage controller and storage control method 
  • 7,681,002 – Storage controller and storage control method 

For Huawei, the move follows on other relatively small-scale acquisitions this year from AT&T and Microsoft spin-out Zumobi. In 2016, it was assigned patents by companies including Freescale Semiconductor, GlobalFoundries, and Yahoo!. This is the Chinese company's first deal with Hitachi. 

But while Jason Ding’s Huawei IP team and the Hitachi IP function led by Yuji Toda were apparently able to find common ground in the transactions market, the transfer does not appear to signal a breakthrough in the litigation fight between the two companies. Hitachi subsidiary Hitachi Maxell continues to pursue an infringement complaint against the Chinese company in the Eastern District of Texas; this is at the pre-hearing stage, according to documents reviewed by IAM.

In its complaint, the Japanese company says it obtained the patents-in-suit from its parent company, Hitachi Limited, after it became a wholly-owned subsidiary in 2010. This was part of an effort to “Align [Hitachi Ltd’s] intellectual property with the licensing, business development, and research and development efforts of Hitachi Maxell, including in the mobile and mobile-media device market”. Eight patents are asserted against Huawei:

  • 5,396,443 – Information processing apparatus including arrangements for activation to and deactivation from a power-saving state
  • 6,754,440 – Video reproducing method and apparatus
  • 6,856,760 – Recording medium
  • 6,928,292 – Mobile handset with position calculation function
  • 7,116,438 – Terminal for information processing
  • 7,203,517 – Mobile communication terminal device
  • 7,509,139 – Method for selecting base station
  • 7,671,901 – Image processing apparatus and mobile terminal apparatus

On the same day in November 2016, Hitachi Maxell asserted eight patents against ZTE. Only the ‘443 patent above appears in both cases. The two assertions against Chinese telecoms businesses – just the fourth and fifth such cases filed since 2000 for Hitachi Maxell – seem to signal a new initiative to monetise the company’s IP through licensing. Meanwhile, the larger Hitachi Group has been active in the IP transactions market as it re-focuses its business away from electronics and toward infrastructure and power systems. In recent years it has transferred patents to companies including Google, Samsung Electronics and IP Bridge. Its recent sale to Huawei, along with its subsidiary’s assertions, show that it continues to monetise its significant patent trove with any means at its disposal.