Kodak owns a patent on previewing still and moving digital images for an electronic camera. (A copy is attached.) Dozens of companies, including LG, Motorola, Nokia and Sony Ericsson, use it in digital cameras in their cell phones. On December 17, 2009, an ALJ at the International Trade Commission issued an Initial Determination finding that Kodak’s patent was not invalid or unenforceable and was infringed. (If you’re not an IP nerd and want to know what these terms mean, drop me a note at pstrand@shb.com. The bottom line was that Kodak won big.) If the decision holds up, the infringer could be barred from importing infringing products into the United States. Welcome to 2010!
On January 14, Kodak initiated another action in the ITC alleging that Apple and RIM infringe the same patent. (A copy of the complaint is attached.) Put yourself in the position of the defendants. Kodak’s patent has been upheld by a Judge. Kodak recently licensed Samsung to practice the patent, adding it to nearly 30 other companies who already pay royalties to Kodak to use the patent in their products. When Apple and RIM set out their defenses, can’t you hear the Judge saying, “Why are you putting me through this?”. Or, “What do you guys know that 30 other multi-billion dollar companies don’t know?” If you’re rooting for Apple or RIM, you better hope they have a killer piece of prior art, a design-around, or a brilliant non-infringement position. Now, think about Kodak’s perspective -- talk about “having them right where you want them.” I’m looking for an early settlement. Kodak has played this one just right – leveraging patent victories and moving up the food chain. In any litigation, you never want to be the last defendant standing.
Of course, turnabout is fair play. Not too many years ago, Kodak was on the wrong side of an infringement case brought by Polaroid relating to instant photography. Kodak got hit with what was then the largest infringement verdict ever -- $900 million, and had to exit the instant camera business.
Peter E. Strand
Shook, Hardy & Bacon L.L.P.
1155 F Street, N.W.
Washington, D.C. 20004
Kodak ITC Compliant.pdf (2.24 mb)
Kodak Patent.pdf (913.75 kb)