DCT

1:18-cv-00310

Maxell Ltd v. Olympus Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:18-cv-00310, D. Del., 02/23/2018
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant Olympus Corporation resides in the District and because Defendants purposefully chose the venue for a related declaratory judgment action.
  • Core Dispute: Plaintiff alleges that Defendant’s digital cameras infringe ten U.S. patents related to a range of digital imaging technologies, including image sensor processing, white balance control, and methods for recording and displaying still and moving pictures.
  • Technical Context: The patents-in-suit address fundamental challenges in digital camera design, such as balancing image quality for both still and video capture, ensuring accurate color reproduction under various lighting conditions, and managing data storage efficiently.
  • Key Procedural History: The complaint notes that Defendants previously filed a declaratory judgment action against Plaintiff in the same district (Case No. 1:18-cv-00216-UNA). It also alleges that Defendants have been on notice of the asserted patents since at least April 7, 2016, which forms the basis for the willfulness allegations.

Case Timeline

Date Event
1999-07-05 Priority Date for ’102, ’088, and ’529 Patents
2000-01-11 Priority Date for ’616, ’177, and ’604 Patents
2002-02-27 Priority Date for ’821, ’209, and ’284 Patents
2004-07-20 U.S. Patent No. 6,765,616 Issues
2007-04-03 U.S. Patent No. 7,199,821 Issues
2007-12-13 Priority Date for ’244 Patent
2008-11-25 U.S. Patent No. 7,457,529 Issues
2009-06-23 U.S. Patent No. 7,551,209 Issues
2011-11-15 U.S. Patent No. 8,059,177 Issues
2012-03-06 U.S. Patent No. 8,130,284 Issues
2013-04-09 U.S. Patent No. 8,417,088 Issues
2013-07-02 U.S. Patent No. 8,478,102 Issues
2013-12-03 U.S. Patent No. 8,599,244 Issues
2015-08-04 U.S. Patent No. 9,100,604 Issues
2016-04-07 Alleged Date of Notice to Defendants
2018-02-23 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,765,616 - “Electric Camera”

  • Patent Identification: U.S. Patent No. 6,765,616, “Electric Camera,” issued July 20, 2004.

The Invention Explained

  • Problem Addressed: The patent addresses the difficulty of using a single solid-state image sensor to capture both high-quality moving images (video) and high-resolution still images. Video cameras traditionally lacked sufficient pixels for detailed stills, while high-pixel still cameras struggled to produce standard television signals for video without degrading dynamic resolution or requiring large, complex processing circuits. (’616 Patent, col. 1:51-57; col. 2:6-15).
  • The Patented Solution: The invention proposes using an image sensor with a significantly higher number of vertical pixels than required for a standard television signal. For moving video, the camera "vertically mix[es] or cull[s]" signal charges from groups of pixels to produce an output that matches the television system's scanning lines. For high-resolution still images, the camera reads out the signal from every pixel independently. (’616 Patent, Abstract; col. 3:7-21).
  • Technical Importance: This approach provided a technical pathway for creating hybrid "camcorders" or digital cameras that could offer both high-resolution still photography and standard-definition video capture from a single sensor without significant compromises in either mode. (’616 Patent, col. 2:51-57).

Key Claims at a Glance

  • The complaint asserts independent claim 13. (Compl. ¶18).
  • The essential elements of claim 13 are:
    • An image sensing device with a grid of pixels, having at least three times more vertical pixels (N) than the effective scanning lines (M) of a display screen.
    • Color filters arranged on the pixels.
    • A driver arranged to vertically mix or cull signal charges from every K pixels to produce a number of output signal lines corresponding to M.
    • A signal processing unit to generate image signals from the output signals.
    • A display unit to display an image.
    • Wherein the driver mixes/culls every K1 pixels for a first image and every K2 pixels for a second image, with K1 and K2 being different.
  • The complaint reserves the right to assert other claims. (Compl. ¶18).

U.S. Patent No. 7,199,821 - “Imaging Apparatus and Method for Controlling White Balance”

  • Patent Identification: U.S. Patent No. 7,199,821, “Imaging Apparatus and Method for Controlling White Balance,” issued April 3, 2007.

The Invention Explained

  • Problem Addressed: The patent describes a problem in automatic white balance systems where an image dominated by a single, slightly-colored object (such as a human face in a close-up) can be incorrectly identified as having a white balance deviation. This leads to an erroneous "correction" that makes the subject appear unnaturally colored, such as a face "faded into blue." (’821 Patent, col. 2:35-49).
  • The Patented Solution: The invention introduces a more sophisticated control method that adjusts the white balance correction based on additional scene information: the distance to the object, the zoom value of the lens, and the object's brightness. The apparatus sets a "threshold value" based on brightness and zoom, and compares it to the detected object distance to determine whether, or how much, to adjust the white balance. (’821 Patent, Abstract; col. 4:1-11).
  • Technical Importance: This system created a more robust auto white balance function that was less susceptible to errors in common but challenging photographic scenarios, such as portraits or close-ups, where traditional systems might fail. (’821 Patent, col. 3:3-7).

Key Claims at a Glance

  • The complaint asserts independent claim 7. (Compl. ¶35).
  • Claim 7, as corrected, recites an image processing apparatus comprising:
    • An image pickup device.
    • A white balance control means for adjusting white balance based on distance, zoom, and brightness values.
    • An object distance detecting means.
    • A zoom detecting means.
    • An object brightness detecting means.
    • Wherein the white balance control means comprises: a means for setting a threshold based on object brightness and zoom value; a means for comparing the detected distance with the threshold; and a means for obtaining control information for the white balance.
  • The complaint reserves the right to assert other claims. (Compl. ¶35).

U.S. Patent No. 7,551,209 - “Imaging apparatus and method for controlling white balance”

  • Patent Identification: U.S. Patent No. 7,551,209, “Imaging apparatus and method for controlling white balance,” issued June 23, 2009.
  • Technology Synopsis: This patent is related to the ’821 Patent and describes similar technology for improving automatic white balance control by using object distance, zoom, and brightness information to avoid erroneous color corrections. (’209 Patent, Abstract).
  • Asserted Claims: Claims 1, 3, 5, and 6. (Compl. ¶48).
  • Accused Features: The complaint alleges that the Olympus Products’ autofocus, brightness measurement, and zooming functions are used to control white balance in an infringing manner. (Compl. ¶49).

U.S. Patent No. 8,130,284 - “Imaging Apparatus and Method for Controlling White Balance”

  • Patent Identification: U.S. Patent No. 8,130,284, “Imaging Apparatus and Method for Controlling White Balance,” issued March 6, 2012.
  • Technology Synopsis: Continuing the same technology family as the ’821 and ’209 patents, this patent also relates to adjusting white balance control based on object distance, zoom, and brightness to prevent incorrect color rendering. (’284 Patent, Abstract).
  • Asserted Claims: Claims 1, 3, 5, and 7. (Compl. ¶61).
  • Accused Features: The accused features include the autofocus, brightness, and zoom functions of the Olympus Products, which are alleged to be used to control white balance. (Compl. ¶62).

U.S. Patent No. 8,059,177 - “Electric Camera”

  • Patent Identification: U.S. Patent No. 8,059,177, “Electric Camera,” issued November 15, 2011.
  • Technology Synopsis: This patent is related to the ’616 Patent and concerns an electric camera with an image sensor having a high pixel count. It claims a system with two distinct driver modes for processing pixel signals, which can be selectively switched, allowing for different methods of generating video output. (’177 Patent, Abstract).
  • Asserted Claims: Claim 1. (Compl. ¶74).
  • Accused Features: The complaint alleges the OM-D E-M10 camera infringes by including a first driver mode and a second driver mode for mixing or culling pixel signals, which are selectively switched based on user input via a graphical user interface. (Compl. ¶¶ 76, 78).

U.S. Patent No. 9,100,604 - “Electric Camera”

  • Patent Identification: U.S. Patent No. 9,100,604, “Electric Camera,” issued August 4, 2015.
  • Technology Synopsis: Also related to the ’616 Patent family, this patent describes an electric camera using a high-pixel-count sensor where a driver is configured to vertically mix or cull signal charges from groups of pixels to produce a video signal conforming to a television system's scanning lines. (’604 Patent, Abstract).
  • Asserted Claims: Claims 1 through 5. (Compl. ¶90).
  • Accused Features: The accused features are the OM-D E-M10's image sensor, driver, and processor, which allegedly perform the claimed steps of mixing or culling pixel data to generate video. (Compl. ¶¶ 91-93).

U.S. Patent No. 8,478,102 - “Information Recording/Play-Backing Apparatus”

  • Patent Identification: U.S. Patent No. 8,478,102, “Information Recording/Play-Backing Apparatus,” issued July 2, 2013.
  • Technology Synopsis: This patent relates to a portable recording apparatus with two recording mediums (e.g., internal memory and an SD card) and a controller that manages recording operations to conserve battery power. The controller stops recording to one medium if recording to the other is performed when in an "imaging mode" operating on battery. (’102 Patent, Abstract).
  • Asserted Claims: Claim 1. (Compl. ¶105).
  • Accused Features: The complaint accuses the Olympus TG-3 camera, which has internal memory and an SD card slot, of infringing by including a controller that stops recording to one medium when recording to the other is active in its imaging mode. (Compl. ¶¶ 106-107).

U.S. Patent No. 8,599,244 - “Imaging Apparatus Capable of Switching Display Methods”

  • Patent Identification: U.S. Patent No. 8,599,244, “Imaging Apparatus Capable of Switching Display Methods,” issued December 3, 2013.
  • Technology Synopsis: This patent describes a camera that can generate a "cutout image" (a digitally zoomed portion of the full image) and display either the full image, the cutout image, or both. A controller switches the display method based on a user's operation of the record button. (’244 Patent, Abstract).
  • Asserted Claims: Claim 1. (Compl. ¶119).
  • Accused Features: The complaint alleges the OM-D E-M10 infringes by having a processor that generates cutout images and a display controller that switches the display mode based on user operation of the recording function. (Compl. ¶120).

U.S. Patent No. 8,417,088 - “Video Recording and Reproducing Method, and Video Reproducing Apparatus and Method”

  • Patent Identification: U.S. Patent No. 8,417,088, “Video Recording and Reproducing Method, and Video Reproducing Apparatus and Method,” issued April 9, 2013.
  • Technology Synopsis: This patent describes a method for recording a still picture using two different encoding methods simultaneously from a single photographic capture. For example, it can save a file of the still picture encoded by a first method (e.g., Motion JPEG) and another file of the same still picture encoded by a second, different method. (’088 Patent, Abstract).
  • Asserted Claims: Claim 1. (Compl. ¶132).
  • Accused Features: The OM-D E-M10 is alleged to have a first encoder (e.g., for Motion JPEG) and a second encoder for a different method, and a recorder that saves files of a single still picture encoded by both methods. (Compl. ¶133).

U.S. Patent No. 7,457,529 - “Video Recording Method and Apparatus”

  • Patent Identification: U.S. Patent No. 7,457,529, “Video Recording Method and Apparatus,” issued November 25, 2008.
  • Technology Synopsis: This patent is in the same family as the '088 patent and relates to recording both moving and still pictures. It describes recording still pictures using two different encoding methods, where a first still picture is encoded by a second method and a second still picture is encoded by a first method. (’529 Patent, Abstract).
  • Asserted Claims: Claims 20, 22, 24, 25, 33, and 38. (Compl. ¶145).
  • Accused Features: The OM-D E-M10 is accused of infringing by recording moving pictures with a first encoding method (e.g., Motion JPEG) while also recording first still pictures with a second method and second still pictures with the first method. (Compl. ¶146).

III. The Accused Instrumentality

Product Identification

  • The complaint names a range of "Olympus Products," with the Olympus OM-D E-M10 digital camera serving as the primary exemplary product for most of the asserted patents. (Compl. ¶¶ 18, 25). For U.S. Patent 8,478,102, the Olympus Tough TG-3 is the lead accused product. (Compl. ¶105).

Functionality and Market Context

  • The complaint alleges the OM-D E-M10 is a digital camera that includes a high-resolution image sensor (17 megapixels), a processor capable of various signal processing functions such as video recording and digital zoom, and an electronic display. (Compl. ¶¶ 19, 22). It is further alleged to possess functionalities for autofocus (distance detection), brightness measurement, and zoom control that inform its automatic white balance system. (Compl. ¶36).
  • The Olympus TG-3 is identified as a portable camera that includes both internal memory ("first recording medium") and a slot for SD/SDHC/SDXC cards ("second recording medium"). It is alleged to have an "imaging mode" and a "dubbing mode" for copying images between the two media, and a controller that manages recording to conserve battery power. (Compl. ¶106).
  • The accused products are digital cameras marketed for consumer and professional use. (Compl. ¶1). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

6,765,616 Patent Infringement Allegations

Claim Element (from Independent Claim 13) Alleged Infringing Functionality Complaint Citation Patent Citation
an image sensing device with a light receiving surface having an array of pixels arranged vertically and horizontally in a grid pattern with an arbitrary number of vertically arranged pixels N, where N is equal to or more than three times the number of effective scanning lines M of each field of a display screen The OM-D E-M10 has an image sensing device with a 17 megapixel sensor with pixels in a grid pattern, alleged to satisfy the N ≥ 3M requirement. ¶19 col. 3:9-13
a driver arranged to drive the image sensing device, to vertically mix or cull signal charges accumulated in individual pixels of every K pixels to produce a number of lines of output signals which corresponds to the number of effective scanning lines M... The OM-D E-M10 includes a driver that mixes or culls signal charges from groups of K pixels to generate output lines corresponding to the effective scanning lines M. ¶21 col. 3:13-19
wherein said driver vertically mixes or culls signal charges accumulated in individual pixels of every K1 pixels, when first images are displayed on said display unit, The OM-D E-M10 includes a driver that vertically mixes or culls signal charges from every K1 pixels when first images (e.g., at default zoom) are displayed. ¶23 col. 16:29-33
wherein said driver vertically mixes or culls signal charges accumulated in individual pixels of every K2 pixels, when second images are displayed on said display unit, and The OM-D E-M10 includes a driver that vertically mixes or culls signal charges from every K2 pixels when second images (e.g., at an increased zoom level) are displayed. ¶23 col. 16:34-37
wherein a value of K1 is different from a value of K2. The OM-D E-M10 allegedly uses different values for K1 and K2 for default zoom and an increased zoom level, respectively. ¶23 col. 16:38

7,199,821 Patent Infringement Allegations

Claim Element (from Independent Claim 7) Alleged Infringing Functionality Complaint Citation Patent Citation
An image processing apparatus, comprising: a image pickup device for picking up image of an object via an optical system; The OM-D E-M10 is an image processing apparatus with a multi-megapixel auto-focus camera sensor (image pickup device) and an optical system. ¶36 col. 4:50-52
a white balance control means for controlling white balance of image picked up from the image pick up device; The OM-D E-M10 has a white balance circuit that ensures white objects in images appear white. ¶36 col. 4:53-55
an object distance detecting means for detecting a distance to the object; The OM-D E-M10 includes a circuit and/or processor for detecting object distance, for example via its autofocus functions. ¶36 col. 5:33-37
a zoom detecting means for detecting a zoom value of the optical system; The OM-D E-M10 includes a circuit and/or processor for detecting a zoom value, for example via its zooming functions. ¶36 col. 5:40-43
an object brightness detecting means for detecting brightness; and The OM-D E-M10 includes a circuit and/or processor for detecting object brightness, for example via its brightness measurement functions. ¶36 col. 5:44-46
wherein the white balance control means adjusts the white balance on the basis of the distance which is outputted from the object distance detecting means, the zoom value... and the brightness... The OM-D E-M10 controls white balance in an image based on the detected distance, zoom, and brightness values. ¶36 col. 5:56-62
wherein the white balance control means, comprising; a means for setting a threshold on the basis of the object brightness and the zoom value; The OM-D E-M10 has a circuit for setting a threshold on the basis of object brightness and distance. ¶36 col. 6:49-56
a means for comparing the distance outputted from the object distance detecting means with the threshold; and The OM-D E-M10 has a circuit for comparing the distance outputted from the object distance detecting circuit with the threshold value. ¶36 col. 6:49-56
a means for obtaining control information for the white balance. The OM-D E-M10 has a circuit for obtaining control information for the white balance, such as the white balance mode or amount. ¶36 col. 6:57-59

Identified Points of Contention

  • Scope Questions: For the ’616 Patent, a central question may be whether the accused camera's digital zoom function constitutes the claimed method of using different mixing/culling values (K1 vs. K2) for different images. The defense could argue that digital zoom is a post-capture cropping-and-scaling process, not the pre-readout "mixing or culling of signal charges" described in the patent's specification in the context of CCD charge transfer. (See ’616 Patent, col. 5:1-10).
  • Technical Questions: For the ’821 Patent, the dispute may focus on the specific logic of the white balance system. The complaint alleges the camera sets a threshold based on brightness and zoom to compare against distance. The key question will be whether discovery provides evidence that the accused cameras implement this precise three-factor control algorithm, or if they use a different, non-infringing method to achieve robust white balance.

V. Key Claim Terms for Construction

For U.S. Patent No. 6,765,616

  • The Term: "vertically mix or cull signal charges"
  • Context and Importance: This term defines the core technical mechanism for reducing the high-resolution sensor data for video output. The definition is critical because infringement will depend on whether modern sensor readout techniques (e.g., pixel binning, line skipping, or digital cropping in CMOS sensors) fall within the scope of a term described in the patent in the context of CCD vertical transfer units.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states its object is to enable "taking of highly detailed still images and a moving video taking with reduced image quality degradation without increasing circuitry such as field memory." (’616 Patent, col. 3:1-4). A party might argue any on-chip process that combines or discards pixel data before full readout to achieve this goal should be covered.
    • Evidence for a Narrower Interpretation: The detailed description and figures explain the process in the context of specific CCD operations, describing how "signal charges of four pixel rows" are transferred to a horizontal transfer unit "where they are mixed together." (’616 Patent, col. 6:57-60; FIG. 2). This language, tied to the physical movement and combination of electrical charges, may support a narrower construction limited to the specific CCD architecture disclosed.

For U.S. Patent No. 7,199,821

  • The Term: "a means for setting a threshold on the basis of the object brightness and the zoom value" (from claim 7)
  • Context and Importance: This is a means-plus-function limitation under 35 U.S.C. § 112(f). Its scope is limited to the corresponding structure described in the specification and its equivalents. Practitioners may focus on this term because the infringement analysis will require a direct comparison between the structure disclosed in the patent and the circuitry or software algorithm used in the accused cameras.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation (Equivalents): A plaintiff would argue for a broad range of equivalents, suggesting that any circuit or software module that accepts brightness and zoom as inputs and outputs a threshold value for comparison against distance is structurally equivalent.
    • Evidence for a Narrower Interpretation (Disclosed Structure): The specification identifies the corresponding structure as the "object distance threshold value setting circuit 10." (’821 Patent, col. 5:48-51). Its function is explicitly illustrated in a graph (FIG. 3) showing how the threshold value (G) varies with zoom magnification (E) and illuminance (F). A defendant would argue the scope is limited to this specific circuit and its direct equivalents, potentially excluding different algorithmic approaches.

VI. Other Allegations

Indirect Infringement

  • For all asserted patents, the complaint alleges induced infringement, stating that Defendants provide user guides and instructions that lead customers to directly infringe. (Compl. ¶¶ 26, 39, 52, 65, 81, 96, 110, 123, 136, 149). It specifically references the online user manual for the OM-D E-M10 as an example of such instructions. (Compl. ¶26). Contributory infringement is also alleged on the basis that the accused products contain components, like white balance controls, that are a material part of the invention and not staple articles of commerce. (Compl. ¶¶ 27-28, 40-41).

Willful Infringement

  • The complaint alleges willful infringement for all asserted patents based on Defendants having been "on notice" of the patents "since at least April 7, 2016." (Compl. ¶¶ 29, 42, 55, 68, 84, 99, 113, 126, 139, 152). It is alleged that Defendants continued their infringing activities despite an objectively high likelihood of infringement. (Compl. ¶¶ 30, 43).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of technical implementation: does the evidence show that Defendants' cameras employ the specific control logic claimed in the white balance patents (i.e., using a threshold derived from brightness and zoom to moderate distance-based adjustments), or do they achieve similar results through different, non-infringing algorithms?
  • A key question of claim scope will concern the image sensor patents: can the term "vertically mix or cull signal charges," which the patents describe in the context of CCD charge transfer, be construed to cover the modern digital processing techniques (e.g., pixel binning, line skipping) allegedly used in the accused cameras, which likely use CMOS sensors?
  • A central evidentiary question will relate to the data recording patents: does discovery confirm that, from a single button press, the accused cameras generate and save separate files of the same still image using two distinct encoding methods as required by the claims?