By Eric Schweibenz
On January 10, 2012, Eastman Kodak Company (“Kodak”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Apple, Inc. of Cupertino, California, High Tech Computer Corp. a/k/a HTC Corp. of Taiwan, HTC America, Inc. of Bellevue, Washington, and Exedea, Inc. of Houston, Texas (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain electronic devices for capturing and transmitting images and components thereof that infringe one or more claims of U.S. Patent Nos. 7,210,161 (the ‘161 patent), 7,742,084 (the ‘084 patent), 7,453,605 (the ‘605 patent), 7,936,391 (the ‘391 patent), and 6,292,218 (the ’218 patent).

According to the complaint, the ‘161, ‘084, ‘605, and ‘391 patents are directed to technology allowing a user to “easily share images with friends, relatives, or publishing services from their digital cameras--as opposed to first downloading the images to their personal computers--using an improved, highly efficient user interface.”  The ‘218 patent is directed to “the first effective color preview for a digital camera,” referring to the display that allows a user to preview a scene and subsequently view a captured image on a digital camera.

The complaint alleges that Apple, Inc. (“Apple”) infringes the ‘161, ‘084, ‘605, and ‘391 patents “by importing and/or selling after importation devices that directly infringe, contribute to infringement, and induce infringement either literally or under the doctrine of equivalents.”  Kodak points to the iPad 2, iPod touch, iPhone 4, and iPhone 4S as representative infringing devices.  The complaint similarly accuses HTC Corp., HTC America, Inc., and Exedea, Inc. (collectively, “HTC”) of infringing the ‘161, ‘084, ‘605, and ‘391 patents based on representative devices HTC EVO View 4g, Flyer, and Jetstream.  HTC is further alleged to infringe the ‘218 patent based in particular on Kodak’s analysis of the HTC Vivid camera phone and the EVO View 4G handheld tablet. 

As to related litigation, the complaint describes a patent infringement case in the U.S. District Court for the Western District of New York accusing different defendants of infringing the ‘218 patent and patents related to the ‘161, ‘084, ‘391, and 605 patents.  This suit was settled with a license bearing royalties to Kodak, and dismissed with prejudice.  The ‘218 patent (among others) has also been asserted against different defendants in the U.S. District Court for the Eastern District of Texas and again in the U.S. District Court for the Western District of New York with identical results.  Kodak filed a complaint for violation of Section 337 against various respondents (different from the present complaint) in relation to the ‘218 patent (among others), and this case has been settled favorably for Kodak and terminated (Investigation No. 337-TA-663, see our March 12, 2010 post for more details).  Kodak filed another Section 337 case against various respondents, including Apple, based on the ‘218 patent and other patents which has been remanded and is currently under investigation (Investigation No. 337-TA-703, see our August 8, 2011 post for more details on the original initial determination).  RIM Ltd. and RIM Corp. filed a declaratory judgment action against Kodak in the U.S. District Court for the Northern District of Texas seeking a determination that they did not infringe the ‘218 patent, among others, and that these patents were invalid and unenforceable.  This case remains pending.  Kodak filed a case against Apple in the U.S. District Court for the Western District of New York alleging infringement of the ‘218 patent, among others.  This case is stayed.  The complaint describes that two ex parte reexamination requests were filed against the ‘218 patent.  These requests were merged and a Rexamination Certificate was issued confirming all claims as patentable without amendment.  Concurrent with the filing of this complaint, Kodak filed suit against Apple in the U.S. District Court for the Western District of New York alleging infringement of the ‘161, ‘084, ‘605 and ‘391 patents and filed a separate suit in the same court against HTC alleging infringement of the ‘161, ‘084, ‘605, ‘391, and ‘218 patents.

Kodak asserts that it meets both the economic and technical prongs of the domestic industry requirement, arguing that it has “made substantial investments in the United States in continuously developing advanced technologies that incorporate the inventions claimed in the [asserted patents].”  The complaint also alleges that Kodak has made substantial investments in licensing its digital imaging portfolio which includes several of the asserted patents.  Last, Kodak points out that domestic industry was previously considered by the Commission in relation to the ‘218 patent and it was found that Kodak satisfies the domestic industry requirement. 

With respect to potential remedy, the complaint requests the Commission to issue a permanent limited exclusion order barring entry into the U.S. of Proposed Respondents’ devices or components thereof that infringe the ‘161, ‘084, ‘605, ‘391, and/or ‘218 patents.  Kodak also requests permanent cease and desist orders directed at the Proposed Respondents, directing each domestic Proposed Respondent to cease and desist from importing, marketing, selling, etc. imported devices or components that infringe the ‘161, ‘084, ‘605, ‘391, and/or ‘218 patents.