On October 28, 2010, Chief ALJ Paul J. Luckern issued the public version of Order No. 24 (dated August 13, 2010) denying Respondents Research In Motion, Ltd. and Research In Motion Corp.’s (collectively, “RIM”) motion for summary determination that Complainant Eastman Kodak Co. (“Kodak”) failed to establish the technical prong of its domestic industry requirement and for non-infringement of U.S. Patent No. 6,292,218 (the ‘218 patent) in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

By way of background, the Commission instituted this investigation on February 17, 2010, based on Kodak’s complaint against Respondents RIM and Apple Inc.  A claim construction hearing was conducted on May 24-25, 2010 and ALJ Luckern issued an initial determination (ID) construing the disputed claim terms on June 22, 2010.  See our July 21, 2010 and July 27, 2010 posts for more details.  On July 1, 2010, RIM filed for summary determination regarding the technical prong of the domestic industry requirement and for non-infringement of the ‘218 patent as to all of its accused devices, which include certain of the BlackBerry Curve, Pearl, Bold, Storm, and Tour series.  On July 12, 2010, the Commission Investigative Staff (“OUII”) and Kodak filed responses.  At ALJ Luckern’s request, on July 29, 2010, RIM, Kodak, and the OUII provided further briefing on the issues.

The ‘218 patent is entitled “Electronic Camera for Initialing Capture of Still Images While Previewing Motion Images” and is directed to a camera that can capture a high-quality still image without interrupting the processing and display of preview (i.e., motion) images.  Claim 15, the sole independent claim of the ‘218 patent at issue in the investigation, requires two types of processors: (1) a motion processor and (2) a still processor.  The Order reiterated the determinations made in ALJ Luckern’s claim construction ID, namely that the motion processor and still processor recited in claim 15 required “distinct circuitry,” meaning circuitry that is not shared by the motion processor and the still processor and thus is not overlapping. 

With regard to the term “at least three different colors,” in claim 15, ALJ Luckern again followed the rationale of his claim construction ID, and construed it as “three or more distinct colors, for example red, blue and green, where each color is a phenomenon of light or visual perception that enables one to differentiate otherwise identical objects.”  The ALJ determined that this definition did not include YCC data having as its three components: luminance, Chroma-B, and Chroma-Y.

Relying upon the ALJ’s claim constructions, Respondent RIM argued that Kodak provided no evidence that the motion processors and still processors in its accused devices contain “different and distinct” circuitry as required by claim 15.  Although this portion of the Order was heavily redacted, it appears that RIM, supported by OUII, argued that at least one element of its accused devices shared circuitry for both the motion and still processors.  Kodak apparently argued that such element(s) constituted a “preprocessing” step that is not part of either the motion processor or still processor.  ALJ Luckern determined that Kodak and RIM disputed which circuitry in the accused products constituted the still processor, as well as the functionality of these two processors, creating genuine issues of material fact directly impacting whether the accused products meet the claim limitations of “motion processor” and “still processor.”

The Order was also heavily redacted with respect to whether RIM’s accused products met the “at least three different colors” limitation (e) of claim 15.  Relying upon the ALJ’s claim construction, RIM appears to have argued that Kodak’s reliance on “YCbCr equivalents” could not support a finding of infringement.  According to the Order, OUII agreed, but further argued that the ALJ’s claim construction did not preclude finding infringement under the doctrine of equivalents.  ALJ Luckern determined that factual disputes as to the operation of the accused products constituted genuine issues of material fact directly impacting whether the accused products meet the claim limitation of “at least three different colors.”

With respect to the technical prong of the domestic industry requirement, RIM, supported by OUII, argued that the Kodak cameras identified as practicing claim 15 of the ‘218 patent did not have distinct and different circuitry for their motion and still processors, and that the motion processors produce data in YCC, rather than RGB format, which therefore do not generate the “at least three different colors” required by claim 15.  ALJ Luckern determined that Kodak raised disputed facts as to the functionality of various circuits in Kodak cameras, and whether such circuits produce data in YCC or RGB formats, such that genuine issues of material fact existed with respect to whether Kodak’s products satisfy the technical prong.

For the above reasons RIM’s motion for summary determination on non-infringement and the technical prong of domestic industry was denied in toto.