Kodak alleges patent infringement by Apple and RIM

The Kodak complaint, filed with the U.S. International Trade Commission (ITC), specifically claims that Apple’s iPhones and RIM’s camera-enabled BlackBerry devices infringe a Kodak patent that covers technology related to a method for previewing images. Separately, Kodak filed two suits today against Apple in U.S. District Court for the Western District of New York that claim the infringement of patents related to digital cameras and certain computer processes.

“Kodak has a long history of digital imaging innovation and we have invested hundreds of millions of dollars creating our industry-leading patent portfolio,” said Laura G. Quatela, Chief Intellectual Property Officer, and Vice President, Eastman Kodak Company. “In the case of Apple and RIM, we’ve had discussions for years with both companies in an attempt to resolve this issue amicably, and we have not been able to reach a satisfactory agreement. In light of that, we are taking this action to ensure that we protect the interests of our shareholders and the existing licensees of our technology.

“Our primary interest is not to disrupt the availability of any product but to obtain fair compensation for the use of our technology,” Quatela said. “There’s a basic issue of fairness that needs to be addressed. Those devices use Kodak technology, and we are merely seeking compensation for the use of our technology in their products.”

Kodak has licensed digital imaging technology to approximately 30 companies, including such leading mobile-device companies as LG, Motorola, Nokia, Samsung, and Sony Ericsson, all of which are royalty bearing to Kodak.

On Dec. 17, in an action involving Samsung and Kodak, an ITC Administrative Law Judge issued a ruling declaring that the Kodak patent covering color image preview (No. 6,292,218) was valid and enforceable, and that Samsung’s camera-enabled mobile devices infringed upon that Kodak patent.

In the complaint against Apple and RIM, Kodak is seeking from the ITC a limited exclusion order preventing the importation of infringing devices, including certain mobile telephones and wireless communication devices featuring digital cameras.

In the first suit against Apple in U.S. District Court, Kodak alleges infringement of two patents generally covering image preview and the processing of images of different resolutions. In the second suit, Kodak alleges infringement of patents that describe a method by which a computer program can “ask for help” from another application to carry out certain computer-oriented functions. The allegations in the second suit apply to any Apple product that uses the processing method described above. The patents at issue in the second suit were previously the subject of litigation between Kodak and Sun Microsystems Inc., and in that case, a federal jury determined in a 2004 trial that Sun’s Java programming technology had infringed the patents. Kodak later settled the suit by agreeing to a payment from Sun in return for a license for the patents at issue.

In both District Court actions against Apple, Kodak is seeking to permanently enjoin Apple from further infringement as well as unspecified damages.

“We remain open to negotiating a fair and amicable agreement with both Apple and RIM, which has always been our preference and our practice with other licensees,” Quatela said. “We seek to avoid litigation in our licensing programs whenever possible. But when the infringement is persistent, we will act to defend the interests of our shareholders and licensees, and to promote the fair compensation that is the bedrock of innovation.”