Jacob Schindler

Hitachi unit Maxell Ltd filed five US patent suits this month following on the Huawei and ZTE campaigns it launched last year. The breadth of the companies and industries on the defendant side in this latest offensive suggest that a significant initiative is underway within the Japanese company to increase its licensee base and royalty earnings.

Three of the new complaints (which I accessed using Lex Machina) target well-known companies in the mobile space. Suits against Blackberry, ASUSTeK Computer and Blu Products name a range of mobile, tablet and other devices accused of infringing patents which appear to be related to mobile phones and cameras. 

The other two defendants – Fandango Media and FOTV Media Networks – both operate online video streaming services. These suits involve patents directed to digital video recording and transmission.

In each case, Maxell specifies that it was assigned the patents-in-suit by parent Hitachi Ltd, in what it says was “an effort to align its intellectual property with the licensing, business development, and research and development efforts of Maxell, including in the mobile and mobile-media device market”.

Until last year, Maxell and the Hitachi Group generally showed relatively little interest in asserting US patents in order to increase their royalty revenues. The subsidiary fought a large number of antitrust cases and Hitachi has been the target for its share of NPE assertions, but plaintiff-side actions were limited to a handful of competitor cases. Now, it appears that the Japanese conglomerate wants to collect more licence fees from the electronics sector – though its own operating business has largely re-focused into infrastructure and other areas.

Over the years, Hitachi has divested a large quantity of electronics-sector IP rights, mostly as a result of selling off business units themselves. Maxell, which is still active in selling wireless charging solutions and other mobile accessories, has evidently been tapped to take on a bigger licensing role when it comes to the assets that the company still owns.

The two earlier US cases, against Huawei and ZTE, have both entailed interesting twists thus far. As IAM reported last month, Hitachi apparently sold a portfolio including at least seven US patent rights to Huawei in July. Continued docket entries suggest that this was not part of any settlement between the two rivals, which have continued their courtroom dispute. It shows a certain pragmatism to the Japanese firm’s ‘all-of-the-above’ monetisation efforts.

In the ZTE case, Chinese media reported this week that the defendant had retaliated with SIPO invalidation requests against Hitachi, to no avail. In May, the Chinese company asked the Patent Re-examination Board (PRB) to throw out two of Hitachi’s Chinese rights. But when the decisions were handed down this month, both patents emerged unscathed. Curiously, there isn’t a single IPR pending in the US connected with either the ZTE or Huawei case, even though the PTAB is generally considered less friendly to patent owners than the PRB.

Perhaps the PRB actions suggest a worry that Hitachi may become more active in enforcing patents in China itself. Another Hitachi unit, Hitachi Metals, is contesting one of the most important pending patent cases in China, as a consortium of local companies ask a court in Ningbo to force the Japanese firm to license them non-SEP patents. Elsewhere, Hitachi Metals last month also asked the ITC to halt imports by several Chinese materials companies for allegedly stealing the company’s trade secrets.