Jacob Schindler

Last month, the company previously known as Hitachi Maxell formally dropped ‘Hitachi’ from its name amid a corporate re-structuring. As the Osaka-based business promotes its more streamlined focuses, recent assignments suggest that patent transactions and litigations will continue to play a role in its corporate re-invention.

Among the segments Maxell no longer operates in is magnetic tape cartridges. Once one of the most recognisable products under the Maxell brand, the company shuttered the division in 2014.  That decision left only Fujifilm and Sony competing in the market, and according to USPTO assignments records from September, it is the former company that has benefitted patent-wise from its erstwhile rival's withdrawal. Maxell transferred 53 US patents related to magnetic tapes to Fujifilm in two separate assignments on 1st September. Notably, Fujifilm is locked in a litigation fight with Sony over that same technology. As this blog detailed last week, the two sides are currently contesting an ITC investigation that could have huge implications for the availability of SEP injunctions in that venue going forward.

A much smaller assignment – just two assets so far – from late October shows that Maxell may complement its own ongoing assertion campaign with possible privateering arrangements with NPEs. Maxell transferred one application and one US patent with a grant date in 2015 – both related to lithium batteries – to an entity called MicroConnect Corp. based in Marshall, Texas. Texas state records show that that company’s president is Alan Loudermilk, a patent attorney who has led several patent assertion entities.

Loudermilk’s most recent venture is 511 Technologies, Inc, which filed 11 patent suits over the past two years against companies including Huawei, Qualcomm and Microsoft, all of which have resulted in either a voluntary or stipulated dismissal, according to Lex Machina. Previously, he was CEO of Solid State  Storage Solutions, Inc, which acquired a portfolio of patents from Japan’s Renesas and asserted them against eight companies in 2011 and 2012 before transferring a portion of them to Acacia two years ago.

Former parent Hitachi was not necessarily averse to selling patents to NPEs, and did so as early as 2008, placing it well ahead of the curve in Japan. Hitachi remains the largest investor in Maxell, but owns just 15% of the company’s shares. IP decisions are taken within Maxell by an IP department that sits within the company’s corporate strategy division and is led by Akihiro Nishimuta.

While Maxell is currently asserting patents on its own behalf against seven different defendants in the US (cases we covered here), the sale to MicroConnect suggests there are other assets it feels are best utilised by third-party licensors.