Canon may have surprised some observers when it sued 31 separate defendants in a single day last week in the US. It is a famously conservative company, and head of IP Kenichi Nagasawa has long been a vocal critic of both NPE activity and the large corporations that enable it. But while Canon typically eschews litigation with large competitor companies, it has been consistent in using its patent portfolio – one of the world’s largest – against smaller firms threatening its printer cartridge business.
In all, 48 firms are named in an ITC complaint Canon filed on 28th February - 14 of these are corporations domiciled in China, Hong Kong or Macau. According to a representative patent complaint, the defendants import replacement toner cartridges which are compatible with Canon and HP brand laser printers. In turn, Canon has asserted at least seven cartridge-related US patents against each respondent at a range of district courts, in states including Delaware, California, Arizona and Texas. It is very unlikely that Canon has any desire to grant these types of entities a revenue-bearing licence. Instead, the chances are that it would rather see them shut out of this particular sector to protect its cartridge business.
This is not the first time Canon has mounted such a campaign. It requested ITC investigations concerning toner cartridges in 2010, 2012, 2014 and 2015. Some of these had just as many defendants as the present complaint, and Canon appears to have been targeting certain companies repeatedly over the course of these eight years. This suggests that the Japanese firm faces a very challenging cat-and-mouse game even when it is able to obtain exclusion orders.
Canon’s opposition to monetisation of patents through assertion, then, does not preclude it being very aggressive with its own portfolio. For big companies, the Canon philosophy goes, the proper place to resolve patent issues is through private negotiation, not in the courtroom. This reflects the longstanding, traditional approach in Japan. But when it comes to stamping out smaller players, the gloves do come off.
But another set of patent suits filed in the US recently illustrate how this philosophy is slowly but surely changing among Japanese corporates.
Over the past year, IAM has followed a number of patent litigation campaigns launched by Maxell. The former Hitachi unit has targeted companies including ZTE, Huawei and Blackberry as it seeks to expand its licensing programme. But on 6th February, it found itself answering a US patent complaint from a very unlikely plaintiff: fellow Japanese firm Olympus Corporation. The Tokyo-based optics firm has almost always found itself on the defensive in patent suits, often at the hands of NPEs. Its lawsuit against Maxell last month appears to be just its second US assertion - and the first against another Japanese company. Maxell has responded with a countersuit. Given Maxell’s recent activity, it seems plausible that Olympus was stirred to action by a very strong licence approach.
Then there is the case involving another Hitachi spin-off, Hitachi Koki Electric. The conglomerate’s former power tools division was acquired by buyout firm KKR in a $1.3 billion deal last March. Since January of 2017, Koki has been fighting off a patent suit filed by Ohio-based competitor Senco Brands. In August, Senco was bought by Japanese major Kyocera, but the fight has gone on nonetheless. Last week, Koki filed a countersuit against Kyocera Senco, as it is now known.
The Hitachi Koki story closely tracks the experience of Hitachi’s former semiconductor equipment business. As this blog wrote last month, Hitachi Kokusai Electric became involved in its first-ever US patent dispute right around the same time KKR – the same buyer – was completing a $2.2 billion takeover.
Are private equity types working behind the scenes to encourage former Hitachi businesses to maximise their patent revenue? Are businesses within Hitachi taking the initiative to deliver greater IP value with the expectation that they will very soon need to demonstrate their worth to a new ownership group?
Either way, it seems that Japanese v Japanese litigation battles that were once anathema are going to be an increasingly common feature of the patent environment.