There is a whole constellation of pending actions pending involving Apple and Eastman Kodak. Here is a summary list (with details on status to follow):
- International Trade Commission Investigative Report Number 337-703, Eastman Kodak v. Apple. Complaint involves patent no. 6,292,218 ("the '218 patent'").
- International Trade Commission Investigative Report Number 337-717, Apple v. Eastman Kodak. Complaint involves patents identified as 6,031,964 (“the ‘964 patent’”) and RE 38,911 (“the RE ‘911 patent’”).
- Western District of New York Case No. 6:10-CV-06021-MAT. Eastman Kodak v. Apple. Complaint involves U.S. Patent No. 6,292,218 (“the ‘218 patent’”) and U.S. Patent No. 5,493,334 (“the ‘335 patent’”).
- Western District of New York Case No. 6:10-CV-06022. Eastman Kodak v. Apple. Complaint/Counterclaim involves U.S. Patent No. 5,226,161 (“the ‘161 patent’”); U.S. Patent No. 5,421,012 (“the ‘012 patent’”); U.S. Patent No. 5,303,379 (“the ‘379 patent’”); U.S. Patent No. 5,341,293 (“the ‘293 patent’”); U.S. Patent No. 5,898,434 (“the ‘434 patent’”); U.S. Patent No. 5,634,074 (“the ‘379 patent’”); U.S. Patent No. 5,072,925 (“the ‘925 patent’”); and, U.S. Patent No. 5,920,726 (“the ‘726 patent’”).
- Northern District of California Case No. CV 10-01609 JCS . Apple v. Eastman Kodak. Complaint involves U.S. Patent No. 6,031,964 (“the ‘964 patent’”) and U.S. Patent No. RE38,911 (“the RE ‘911 patent’”).
International Trade Commission Investigative Report Number 337-703, Eastman Kodak v. Apple and Research in Motion. Complaint involves United States Patent No. 6,292,218 ("the '218 patent'").
A complete docket of this matter can be found here: Page One, Page Two, Page Three, Page Four, Page Five, Page Six, Page Seven, Page Eight, Page Nine, Page Ten, Page Eleven, Page Twelve, Page Thirteen, Page Fourteen, Page Fifteen. The notice of investigation can be found here.
This investigation appears to be a spin-off of an earlier investigation 337-663 which was settled. In that matter, Kodak received multiple rulings in its favour including the validity and enforcibility of the 218 patent and the existence of a domestic industry. In this complaint, Kodak seeks to bar the importatation of certain RIM and Apple mobile devices that contain a camera. Apple and RIM are accused of infringement, contributory infringement, and inducement to infringe upon Kodak's 218 patent. This patent has a rich litigation history resulting in many settlements between Kodak and other prominent technology firms. This complaint was filed January 13, 2010. Apple's response is located here, and RIM's response is located here. Apple has requested permission to Amend. Kodak has opposed.
As six months have passed since filing, a great deal of activity has transpired. It would be beyond the scope of this article to detail every prior filing in full, so here is a thumbnail sketch to bring us up to the present state of affairs.
Already there is an epic battle of the experts. The submitted testimony is frankly beyond my ken. Multiple motions for summary determinations have been filed and argued. One of the issues involved how to interpret certain patent language, particularly, "Each Captured Image Having a First Number of Color Pixel Values Provided in a First Color Pattern." The minutae of each and every word has been argued. This issue, at a minimum, was the subject of a future Markman hearing in late May. The results of this hearing are not yet known. Additionally Kodak is attempting to bring in orders and findings from an earlier complaint against LG and Samsung (337-663) to which Apple and RIM objected. A target completion date has been determined of May 23, 2011.
International Trade Commission Investigative Report Number 337-717, Apple v. Eastman Kodak. Complaint involving patents identified as 6,031,964 (“the ‘964 patent’”) and RE 38,911 (“the RE ‘911 patent’”).
We first discussed the International Trade Commission complaint made by Apple against Eastman Kodak here. Since that time, Kodak has filed an answer to Apple's complaint. Kodak's filing can be found in full here. Briefly, as expected, it denies any infringing activity on the part of Kodak with regard to any Apple patent and makes claims that many of the patented claims are invalid and/or un-enforceable. Oddly, it denies the following paragraphs
13. The technologies at issue relate generally to advancements and innovations in the fields of image processing, power management, and memory architectures in portable digital devices.
19. The '964 patent relates generally to a digital camera device implemented using a unified memory architecture. The '964 patent discloses as an illustrative embodiment an imaging device for capturing raw image data and a computer for processing, compressing, and storing the multiple image data. A central processing unit allocates storage locations within a dynamic random-access memory depending on the requirements of the system and the current image data. The invention also includes a power management system to protect data stored in the device's memory if a power failure is detected. The invention finds particular applicability in today's digital cameras, which can routinely process multiple captured images simultaneously (for example, when the camera is set in a "burst" mode of image capture). Today's cameras also employ the '964 patent's power management system to monitor battery capacity and provide the user with an alert (such as a visual or audio indication) that the battery is about to run out of power. This helps the user ensure that captured images are properly saved before the battery is completely drained.
22. The RE '911 patent relates generally to a digital image capture device with an image processing chain containing two or more image processors. The RE '911 patent discloses as an illustrative embodiment parametric controls within each of the two or more image processors that alter image processing within the digital image capture device. A central processing unit links the two or more image processors. The central processing unit also facilitates access to the parametric controls in order to modify the image processors and alter image processing. The invention of the RE '911 patent is routinely employed by today's digital cameras, which typically provide a menu allowing the user to change the settings on a multiple image processing options, such as white balance, color, sharpness, resolution, etc. Those changes are then implements in image processors within the camera, which apply the altered image processing to captured images.
Most significantly, Kodak has asserted ten affirmative defenses including:
- Invalidity of Apple's asserted patents in light of other prior patents.
- Noninfringement of Apple's asserted patents.
- Implied license to practice the asserted claims of Apple.
- Estoppel.
One of the items in controversy is whether or not a "domestic industry" exists. Apple alleged its existence in Paragraph 57 of the Complaint as follows:
57. A domestic industry exists, as defined under 19 U.S.C. Section 1337(a)(3)(A), (B), and (C), comprising significant investments in physical operations, employment of labor and capital, and exploitation of the Asserted Patents.
to which Eastman Kodak simply denied. Eastman Kodak also filed a request for certain confidential information and agreed to be bound by confidentiality. A schedule was also determined with the following significant dates:
- Fact Discovery Cut-off: October 20, 2010
- Expert Discovery Cut-off: November 3, 2010
- Dispositive Motion Deadline: November 30, 2010
- Pre-Trial Statements and Briefs: December 15, 2010
- Target Completion Date for Investigation: September 19, 2011
An updated docket can be found here.
Western District of New York Case No. 6:10-CV-06021-MAT. Eastman Kodak v. Apple, involving U.S. Patent No. 6,292,218 (“the ‘218 patent’”) and U.S. Patent No. 5,493,334 (“the ‘335 patent’”).
Nothing new has transpired in this case since our last report here in which we summarized the proceeding which had thus far culminated in both parties stipulating to a stay of the matter on March 25, 2010, until such time as there is a final, unappealable decision in the relevant ITC action.
Western District of New York Case No. 6:10-CV-06022. Eastman Kodak v. Apple, involving U.S. Patent No. 5,226,161 (“the ‘161 patent’”); U.S. Patent No. 5,421,012 (“the ‘012 patent’”); U.S. Patent No. 5,303,379 (“the ‘379 patent’”); U.S. Patent No. 5,341,293 (“the ‘293 patent’”); U.S. Patent No. 5,898,434 (“the ‘434 patent’”); U.S. Patent No. 5,634,074 (“the ‘379 patent’”); U.S. Patent No. 5,072,925 (“the ‘925 patent’”); and, U.S. Patent No. 5,920,726 (“the ‘726 patent’”).
Here is a copy of the updated docket entries. A scheduling order was filed with dates extending at least as far as April 29, 2011, and Eastman Kodak responded to Apple's Answer and Counterclaim. This response basics admits that the two parties are fighting and nothing more. Kodak's affirmative defenses to the Counterclaim are similar to those in defense of Apple's ITC Complaint, such as:
- Invalidity of Apple's asserted patents in light of other prior patents.
- Noninfringement of Apple's asserted patents.
- Estoppel.
However, Kodak also asserted the following:
- Laches, Waiver, and Unclean Hands.
- Failure to Mark in Compliance with 35 U.S.C. Section 287
- Other as yet Unknown Defenses
And Kodak filed a Counterclaim to Apple's Amended Counterclaim as new patents were introduced into the case at that time. Whew, this gets complicated. Kodak asks for declaratory judgments of non-infringement and invalidity for each of the asserted patents.
Northern District of California Case No. CV 10-01609 JCS . Apple v. Eastman Kodak, involving U.S. Patent No. 6,031,964 (“the ‘964 patent’”) and U.S. Patent No. RE38,911 (“the RE ‘911 patent’”).
An updated docket for this matter can be found here. Since our last discussion, Eastman Kodak filed motions to transfer and to stay. The hearing on the Motion to Transfer has been scheduled for July 16, 2010, and the hearing on the Motion to Stay is scheduled for July 23, 2010.
Motion to Transfer. Kodak argues that Apple's "retaliatory" complaint should be transfered to the Western District of New York. Although different patents are involved, the allegedly infringing Kodak products are the same as those involved in the New York litigation.
Motion to Stay. The parties agreed that this matter should be stayed until resolution of the relevant ITC action.
This brings us up to date. Stay tuned here for further developments as they happen.
In addition to her position as Assistant Editor at World of Apple, dizzle runs idrankthekoolaid, an Apple fangrl satire blog, and is an Administrator and Hostess at MyAppleSpace and their vidcast MASTv.