P. 1
Kodak Sues Apple and HTC Over Smartphone Camera Patents

Kodak Sues Apple and HTC Over Smartphone Camera Patents

|Views: 912|Likes:
Published by FindLaw
Another battle has opened up in the smartphone patent wars as struggling photographic equipment manufacturer Eastman Kodak has sued Apple and HTC over the camera and photography software in the two companies' smartphone and tablet computer devices. Kodak alleges that Apple and HTC violated its patents covering the transmission of digital photographs directly from a camera over a cellular phone network or WiFi.
Another battle has opened up in the smartphone patent wars as struggling photographic equipment manufacturer Eastman Kodak has sued Apple and HTC over the camera and photography software in the two companies' smartphone and tablet computer devices. Kodak alleges that Apple and HTC violated its patents covering the transmission of digital photographs directly from a camera over a cellular phone network or WiFi.

More info:

Published by: FindLaw on Jan 11, 2012
Copyright:Attribution Non-commercial

Availability:

Read on Scribd mobile: iPhone, iPad and Android.
download as PDF, TXT or read online from Scribd
See more
See less

01/11/2012

pdf

text

original

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 1 of 11

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF NEW YORK ) ) ) Civil Action ) ) No. ) ) ) JURY TRIAL DEMANDED ) ) )

EASTMAN KODAK COMPANY, Plaintiff, vs. APPLE INC., Defendant.

COMPLAINT AND JURY CLAIM 1. This action arises under the patent laws of the United States, Title 35 of the

United States Code, and relates to U.S. Patent Nos. 7,210,161 (“the ’161 patent”); 7,742,084 (“the ’084 patent”); 7,453,605 (“the ’605 patent”); and 7,936,391 (“the ’391 patent”) (collectively “the Asserted Patents”). The Parties 2. Plaintiff Eastman Kodak Company (“Kodak”) is a New Jersey corporation

with its principal place of business at 343 State Street, Rochester, New York 14650. 3. Founded in 1880, Kodak has a long history of innovation in photography and

image processing. Among many other significant inventions, Kodak and its founder, George Eastman, invented photographic plates in 1879, the hand-held camera in 1888, and roll-up film in 1883. Kodak engineers also designed and built the camera that Neil Armstrong used on the first walk on the moon. 4. Kodak’s innovations have continued in the age of digital photography. In

1977, Kodak designed and built the first operating digital camera. Kodak’s significant

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 2 of 11

investment in research and development has resulted in a continuing stream of improvements to digital imaging technology—improvements that have led to a long line of consumer accepted digital imaging products and more than 1,000 Kodak patents in the field of digital imaging, including the Asserted Patents. Kodak Fellow Kenneth Parulski, a co-inventor of the ’161, ’084, ’605, and ’391 patents, has more than 190 patents to his name and is widely recognized as a pioneer in numerous digital camera technologies. 5. Kodak has invented many of the fundamental innovations used in virtually

every digital camera today, including the Bayer color filter array, the first color megapixel sensor, the first effective color preview for a digital camera, the first color consumer digital camera, and the basic digital architecture utilized by nearly every present-day digital camera. 6. The ’161, ’084, ’605, and ’391 patents are from a collection of Kodak patents

that arose, in part, out of Kodak engineers’ identification of some of the shortcomings of then-existing devices and their vision of a direction for the industry with regard to image transmission. For example, Kodak engineers recognized that it would be desirable for users to easily share images with friends or relatives directly from their digital cameras instead of first transferring the pictures to their personal computers. 7. The Defendant is Apple Inc. (“Apple”). Apple is a California corporation

having its principle place of business at 1 Infinite Loop, Cupertino, California 95014. Among other things, Apple designs, manufactures, markets and sells electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld communications devices, including in this District and elsewhere in the United States.

1

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 3 of 11

Jurisdiction and Venue 8. The personal jurisdiction of this Court over Apple is proper because Apple has

committed and is committing acts of infringement in violation of 35 U.S.C. § 271 and has placed and is continuing to place infringing products into the stream of commerce, via an established distribution channel, with the knowledge and/or understanding that such products are sold in the State of New York, including in this District. These acts cause injury to Kodak within the District. Upon information and belief, Apple derives substantial revenue from the sale of infringing products distributed within the District, and/or expects or should reasonably expect its actions to have consequences within the District and derives substantial revenue from interstate and international commerce. In addition, Apple has, and continues to, knowingly induce infringement within this State and within this District by contracting with others to market and sell infringing products with the knowledge and intent to facilitate infringing sales of the products by others within this District, by creating and/or disseminating user manuals for the products with like knowledge and intent, and by warranting the products sold by others within the District. 9. Venue is proper in this District under 28 U.S.C. §§ 1391(b), (c) and 1400(b). First Claim for Relief (Patent Infringement of U.S. Patent No. 7,210,161) 10. Kodak is the owner by assignment of the ’161 patent, entitled “Automatically

Transmitting Images from an Electronic Camera to a Service Provider Using a Network

2

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 4 of 11

Configuration File,” a true copy of which is attached hereto as Exhibit A. The ’161 patent was duly and legally issued on April 24, 2007. 11. Apple has infringed and continues to infringe, literally and under the doctrine

of equivalents, the ’161 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld communications devices, including, but not limited to, the iPad 2, iPhone 3G, iPhone 3GS, iPhone 4, iPhone 4S, and the iPod touch (4th generation) (the “Accused Devices”), which embody and/or practice at least claims 5 and 7 of the ’161 patent in violation of 35 U.S.C. § 271. 12. Apple has induced, and continues to induce, others to infringe the ’161 patent

in violation of 35 U.S.C § 271, by taking active steps to encourage and facilitate others’ direct infringement of at least claims 5 and 7 of the ’161 patent with knowledge or willful blindness of that infringement, such as, upon information and belief: by contracting for the distribution of the Accused Devices for infringing sale such as by retail sales outlets, by marketing and promoting the Accused Devices and their infringing use, by creating and/or distributing user manuals describing use and operation of the Accused Devices, and by supplying warranty coverage for the Accused Devices sold in this State and in this District. 13. Apple has contributorily infringed the ’161 patent in violation of 35 U.S.C.

§ 271, by selling within the United States, offering for sale within the United States, and/or importing components that embody a material part of the inventions described in at least claims 5 and 7 of the ’161 patent, are known by Apple to be especially made or especially 3

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 5 of 11

adapted for use in infringement of at least claims 5 and 7 of the ’161 patent, and are not staple articles or commodities suitable for substantial, non-infringing use, including the Accused Devices and non-staple constituent parts of those Accused Devices. 14. Upon information and belief, Apple is well-aware of Kodak’s patent portfolio

in this area, which has been the subject of extensive publicity and press coverage. Upon information and belief, from this and other activities, Apple had knowledge of the ’161 patent in advance of the filing of this complaint. Moreover, this complaint and an action simultaneously filed against Apple before the United States International Trade Commission, provide Apple with further notice of the ’161 patent and Apple’s infringement thereof. 15. As a result of Apple’s infringement, both directly and indirectly, Kodak has

suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable harm unless Apple’s infringement is enjoined by this Court. Second Claim for Relief (Patent Infringement of U.S. Patent No. 7,742,084) 16. Kodak is the owner by assignment of the ’084 patent, entitled “Network

Configuration File for Automatically Transmitting Images from an Electronic Still Camera,” a true copy of which is attached hereto as Exhibit B. The ’084 patent was duly and legally issued on June 22, 2010. 17. Apple has infringed and continues to infringe, literally and under the doctrine

of equivalents, the ’084 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld 4

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 6 of 11

communications devices, including, but not limited to, the iPad 2, iPhone 3G, iPhone 3GS, iPhone 4, iPhone 4S, and the iPod touch (4th generation) (the “Accused Devices”), which embody and/or practice at least claims 1, and 7-11 of the ’084 patent in violation of 35 U.S.C. § 271. 18. Apple has induced, and continues to induce, others to infringe the ’084 patent

in violation of 35 U.S.C § 271, by taking active steps to encourage and facilitate others’ direct infringement of at least claims 1, and 7-11 of the ’084 patent with knowledge or willful blindness of that infringement, such as, upon information and belief: by contracting for the distribution of the Accused Devices for infringing sale such as by retail sales outlets, by marketing and promoting the Accused Devices and their infringing use, by creating and/or distributing user manuals describing use and operation of the Accused Devices, and by supplying warranty coverage for the Accused Devices sold in this State and in this District. 19. Apple has contributorily infringed the ’084 patent in violation of 35 U.S.C.

§ 271, by selling within the United States, offering for sale within the United States, and/or importing components that embody a material part of the inventions described in at least claims 1, and 7-11 of the ’084 patent, are known by Apple to be especially made or especially adapted for use in infringement of at least claims 1, and 7-11 of the ’084 patent, and are not staple articles or commodities suitable for substantial, non-infringing use, including the Accused Devices and non-staple constituent parts of those Accused Devices. 20. Upon information and belief, Apple is well-aware of Kodak’s patent portfolio

in this area, which has been the subject of extensive publicity and press coverage. Upon information and belief, from this and other activities, Apple had knowledge of the ’084 5

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 7 of 11

patent in advance of the filing of this complaint. Moreover, this complaint and an action simultaneously filed against Apple before the United States International Trade Commission, provide Apple with further notice of the ’084 patent and Apple’s infringement thereof. 21. As a result of Apple’s infringement, both directly and indirectly, Kodak has

suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable harm unless Apple’s infringement is enjoined by this Court. Third Claim for Relief (Patent Infringement for U.S. Patent No. 7,453,605) 22. Kodak is the owner by assignment of the ’605 patent, entitled “Network

Configuration File for Automatically Transmitting Images from an Electronic Still Camera,” a true copy of which is attached hereto as Exhibit C. The ’605 patent was duly and legally issued on April 24, 2007. 23. Apple has infringed and continues to infringe, literally and under the doctrine

of equivalents, the ’605 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld communications devices, including, but not limited to, the iPad 2, iPhone 3G, iPhone 3GS, iPhone 4, iPhone 4S, and the iPod touch (4th generation) (the “Accused Devices”), which embody and/or practice at least claims 1, 3-6, 9-13, 16, 17, 19, and 20 of the ’605 patent in violation of 35 U.S.C. § 271. 24. Apple has induced, and continues to induce, others to infringe the ’605 patent

in violation of 35 U.S.C § 271, by taking active steps to encourage and facilitate others’ 6

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 8 of 11

direct infringement of at least claims 1, 3-6, 9-13, 16, 17, 19, and 20 of the ’605 patent with knowledge or willful blindness of that infringement, such as, upon information and belief: by contracting for the distribution of the Accused Devices for infringing sale such as by retail sales outlets, by marketing and promoting the Accused Devices and their infringing use, by creating and/or distributing user manuals describing use and operation of the Accused Devices, and by supplying warranty coverage for the Accused Devices sold in this State and in this District. 25. Apple has contributorily infringed the ’605 patent in violation of 35 U.S.C.

§ 271, by selling within the United States, offering for sale within the United States, and/or importing components that embody a material part of the inventions described in at least claims 1, 3-6, 9-13, 16, 17, 19, and 20 of the ’605 patent, are known by Apple to be especially made or especially adapted for use in infringement of at least claims 1, 3-6, 9-13, 16, 17, 19, and 20 of the ’605 patent, and are not staple articles or commodities suitable for substantial, non-infringing use, including the Accused Devices and non-staple constituent parts of those Accused Devices. 26. Upon information and belief, Apple is well-aware of Kodak’s patent portfolio

in this area, which has been the subject of extensive publicity and press coverage. Upon information and belief, from this and other activities, Apple had knowledge of the ’605 patent in advance of the filing of this complaint. Moreover, this complaint and an action simultaneously filed against Apple before the United States International Trade Commission, provide Apple with further notice of the ’605 patent and Apple’s infringement thereof.

7

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 9 of 11

27.

As a result of Apple’s infringement, both directly and indirectly, Kodak has

suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable harm unless Apple’s infringement is enjoined by this Court. Fourth Claim for Relief (Patent Infringement for U.S. Patent No. 7,936,391) 28. Kodak is the owner by assignment of the ’391 patent, entitled “Digital Camera

with Communications Interface for Selectively Transmitting Images over a Cellular Phone Network and a Wireless LAN Network to a Destination,” a true copy of which is attached hereto as Exhibit D. The ’391 patent was duly and legally issued on May 3, 2011. 29. Apple has infringed and continues to infringe, literally and under the doctrine

of equivalents, the ’391 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld communications devices, including, but not limited to, the iPad 2 (3G enabled), iPhone 3G, iPhone 3GS, iPhone 4, and the iPhone 4S (the “Accused Devices”), which embody and/or practice at least claims 11, 12, 15, 17, and 18 of the ’391 patent in violation of 35 U.S.C. § 271. 30. Apple has induced, and continues to induce, others to infringe the ’391 patent

in violation of 35 U.S.C § 271, by taking active steps to encourage and facilitate others’ direct infringement of at least claims 11, 12, 15, 17, and 18 of the ’391 patent with knowledge or willful blindness of that infringement, such as, upon information and belief: by contracting for the distribution of the Accused Devices for infringing sale such as by retail 8

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 10 of 11

sales outlets, by marketing and promoting the Accused Devices and their infringing use, by creating and/or distributing user manuals describing use and operation of the Accused Devices, and by supplying warranty coverage for the Accused Devices sold in this State and in this District. 31. Apple has contributorily infringed the ’391 patent in violation of 35 U.S.C.

§ 271, by selling within the United States, offering for sale within the United States, and/or importing components that embody a material part of the inventions described in at least claims 11, 12, 15,17, and 18 of the ’391 patent, are known by Apple to be especially made or especially adapted for use in infringement of at least claims 11, 12, 15, 17, and 18 of the ’391 patent, and are not staple articles or commodities suitable for substantial, non-infringing use, including the Accused Devices and non-staple constituent parts of those Accused Devices. 32. Upon information and belief, Apple is well-aware of Kodak’s patent portfolio

in this area, which has been the subject of extensive publicity and press coverage. Upon information and belief, from this and other activities, Apple had knowledge of the ’391 patent in advance of the filing of this complaint. Moreover, this complaint and an action simultaneously filed against Apple before the United States International Trade Commission, provide Apple with further notice of the ’391 patent and Apple’s infringement thereof. 33. As a result of Apple’s infringement, both directly and indirectly, Kodak has

suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable harm unless Apple’s infringement is enjoined by this Court.

WHEREFORE, Kodak requests that the Court: 9

Case 6:12-cv-06020-DGL Document 1

Filed 01/10/12 Page 11 of 11

34.

Adjudge that Apple has infringed and continues to infringe the asserted claims

of the ’161, ’084, ’605, and ’391 patents under 35 U.S.C. §§ 271(a), 271(b) and 271(c); 35. Preliminarily and permanently enjoin Apple from further infringement of the

’161, ’084, ’605, and ’391 patents; 36. damages; 37. infringement; 38. 39. Award Kodak its costs and reasonable experts’ fees and attorneys’ fees; and Award Kodak such other relief as the Court deems just and proper. Award Kodak enhanced damages of treble its actual damages for willful Award Kodak compensatory damages and, if necessary, an accounting of all

PLAINTIFF CLAIMS A TRIAL BY JURY ON ALL ISSUES SO TRIABLE.
January 9, 2012 Dated: January 10,2012

Respectfully submitted,
s/Neal L. Slifkin _____________________________________ Paul J. Yesawich, III Neal L. Slifkin Laura W. Smalley HARRIS BEACH PLLC 99 Gamsey Road Pittsford, NY 14534 (585) 419-8636

Timothy Q. Delaney (Of Counsel) Laura Beth Miller (Of Counsel) BRINKS HOFER GILSON & LIONE NBC Tower, Suite 3600 455 North Cityfront Plaza Drive Chicago, IL 60611 (312) 321-4200

10

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 1 of 14

UNITED STATES DISTRICT COURT WESTERN DISTRICT OF NEW YORK EASTMAN KODAK COMPANY, Plaintiff, vs. HTC CORPORATION a/k/a HIGH TECH COMPUTER CORP., HTC AMERICA, INC., and EXEDEA, INC., Defendants. ) ) ) Civil Action ) ) No. ) ) ) JURY TRIAL DEMANDED ) ) ) ) )

COMPLAINT AND JURY CLAIM 1. This action arises under the patent laws of the United States, Title 35 of the

United States Code, and relates to U.S. Patent Nos. 6,292,218 (“the ’218 patent”); 7,210,161 (“the ’161 patent”); 7,742,084 (“the ’084 patent”); 7,453,605 (“the ’605 patent”); and 7,936,391 (“the ’391 patent”) (collectively “the Asserted Patents”). The Parties 2. Plaintiff Eastman Kodak Company (“Kodak”) is a New Jersey corporation

with its principal place of business at 343 State Street, Rochester, New York 14650. 3. Founded in 1880, Kodak has a long history of innovation in photography and

image processing. Among many other significant inventions, Kodak and its founder, George Eastman, invented photographic plates in 1879, the hand-held camera in 1888, and roll-up film in 1883. Kodak engineers also designed and built the camera that Neil Armstrong used on the first walk on the moon.

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 2 of 14

4.

Kodak’s innovations have continued in the age of digital photography. In

1977, Kodak designed and built the first operating digital camera. Kodak’s significant investment in research and development has resulted in a continuing stream of improvements to digital imaging technology -- improvements that have led to a long line of consumer accepted digital imaging products and more than 1,000 Kodak patents in the field of digital imaging, including the Asserted Patents. Kodak Fellow Kenneth Parulski, a co-inventor of the ’218, ’161, ’084, ’605, and ’391 patents, has more than 190 patents to his name and is widely recognized as a pioneer in numerous digital camera technologies. 5. Kodak has invented many of the fundamental innovations used in virtually

every digital camera today, including the Bayer color filter array, the first color megapixel sensor, the first effective color preview for a digital camera, the first color consumer digital camera, and the basic digital architecture utilized by nearly every present-day digital camera. 6. The ’161, ’084, ’605 and ’391 patents are from a collection of Kodak patents

that arose, in part, out of Kodak engineers’ identification of some of the shortcomings of then-existing devices and their vision of a direction for the industry with regard to image transmission. For example, Kodak engineers recognized that it would be desirable for users to easily share images with friends or relatives directly from their digital cameras instead of first transferring the pictures to their personal computers. 7. The Defendants include HTC Corporation a/k/a The High Tech Computer

Corp., HTC America, Inc., and Exedea, Inc. (collectively “HTC”). HTC Corporation a/k/a The High Tech Computer Corp. is a Taiwanese corporation having its principal place of business at 23 Xinghua Road, Taoyuan 330, Taiwan. 1

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 3 of 14

8.

HTC (BVI) Corp. is a wholly-owned subsidiary of HTC Corporation. HTC

(BVI) Corp. is not a defendant, but upon information and belief is engaged in activities on behalf of HTC Corporation, its parent, and is also the parent company of a defendant. 9. HTC America Holding, Inc. is a wholly-owned subsidiary of HTC

Corporation. HTC America Holding, Inc. is not a defendant, but upon information and belief is engaged in activities on behalf of HTC Corporation, its parent, and is also the parent company of a defendant. 10. HTC America, Inc. is a Washington corporation having its principal place of

business at 13920 SE Eastgate Way, Suite 400, Bellevue, Washington 98005. HTC America, Inc. is a wholly owned subsidiary of HTC America Holding, Inc. 11. Exedea, Inc. is a Texas corporation having its principal place of business at

5950 Corporate Drive, Houston, Texas 77036. Exedea, Inc. is a wholly owned subsidiary of HTC (BVI) Corp. Jurisdiction and Venue 12. The personal jurisdiction of this Court over HTC is proper because HTC has

committed and is committing acts of infringement in violation of 35 U.S.C. § 271 and has placed and is continuing to place infringing products into the stream of commerce, via an established distribution channel, with the knowledge and/or understanding that such products are sold in the State of New York, including in this District. These acts cause injury to Kodak within the District. Upon information and belief, HTC derives substantial revenue from the sale of infringing products distributed within the District, and/or expects or should reasonably expect its actions to have consequences within the District and derives substantial 2

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 4 of 14

revenue from interstate and international commerce. In addition, HTC has, and continues to, knowingly induce infringement within this State and within this District by contracting with others to market and sell infringing products with the knowledge and intent to facilitate infringing sales of the products by others within this District, by creating and/or disseminating user manuals for the products with like knowledge and intent, and by warranting the products sold by others within the District. 13. 1400(b). First Claim for Relief (Patent Infringement of U.S. Patent No. 6,292,218) 14. Kodak is the owner by assignment of the ’218 patent, entitled “Electronic Venue is proper in this District under 28 U.S.C. §§ 1391(b), (c), (d), and

Camera for Initiating Capture of Still Images While Previewing Motion Images,” a true copy of which is attached hereto as Exhibit A. The ’218 patent was duly and legally issued on September 18, 2001. 15. HTC has infringed and continues to infringe, literally and under the doctrine of

equivalents, the ’218 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld communications devices, including, but not limited to, the HTC EVO View 4G, Flyer, Jetstream, Vivid, Amaze 4G, Desire, Evo Design 4G, Hero S, Rezound, Rhyme, Sensation 4G, and the Wildfire S (the “Accused Devices”) which embody and/or practice at least claims 15, and 23-27 of the ’218 patent in violation of 35 U.S.C. § 271. 3

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 5 of 14

16.

HTC has induced, and continues to induce, others to infringe the ’218 patent in

violation of 35 U.S.C § 271, by taking active steps to encourage and facilitate others’ direct infringement of at least claims 15, and 23-27 of the ’218 patent with knowledge or willful blindness of that infringement, such as, upon information and belief: by contracting for the distribution of the Accused Devices for infringing sale such as by retail sales outlets, by marketing and promoting the Accused Devices and their infringing use, by creating and/or distributing user manuals describing use and operation of the Accused Devices, and by supplying warranty coverage for the Accused Devices sold in this State and in this District. 17. HTC has contributorily infringed the ’218 patent in violation of 35 U.S.C. §

271, by selling within the United States, offering for sale within the United States, and/or importing components that embody a material part of the inventions described in at least claims 15, and 23-27 of the ’218 patent, are known by HTC to be especially made or especially adapted for use in infringement of at least claims 15, and 23-27 of the ’218 patent, and are not staple articles or commodities suitable for substantial, non-infringing use, including the accused devices and non-staple constituent parts of those accused devices. 18. Upon information and belief, HTC is well-aware of Kodak’s patent portfolio

in this area, which has been the subject of extensive publicity and press coverage. Upon information and belief, from this and other activities, HTC had knowledge of the ’218 patent in advance of the filing of this complaint. Moreover, this complaint and an action simultaneously filed against HTC before the United States International Trade Commission, provide HTC with further notice of the ’218 patent and HTC’s infringement thereof.

4

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 6 of 14

19.

As a result of HTC’s infringement, both directly and indirectly, Kodak has

suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable harm unless HTC’s infringement is enjoined by this Court. Second Claim for Relief (Patent Infringement of U.S. Patent No. 7,210,161) 20. Kodak is the owner by assignment of the ’161 patent, entitled “Automatically

Transmitting Images from an Electronic Camera to a Service Provider Using a Network Configuration File,” a true copy of which is attached hereto as Exhibit B. The ’161 patent was duly and legally issued on April 24, 2007. 21. HTC has infringed and continues to infringe, literally and under the doctrine of

equivalents, the ’161 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld communications devices, including, but not limited to, the HTC EVO View 4G, Flyer, Jetstream, Vivid, Amaze 4G, Desire, Evo Design 4G, Hero S, Rezound, Rhyme, Sensation 4G, and the Wildfire S (the “Accused Devices”), which embody and/or practice at least claims 5 and 7 of the ’161 patent in violation of 35 U.S.C. § 271. 22. HTC has induced, and continues to induce, others to infringe the ’161 patent in

violation of 35 U.S.C § 271, by taking active steps to encourage and facilitate others’ direct infringement of at least claims 5 and 7 of the ’161 patent with knowledge or willful blindness of that infringement, such as, upon information and belief: by contracting for the distribution of the Accused Devices for infringing sale such as by retail sales outlets, by marketing and 5

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 7 of 14

promoting the Accused Devices and their infringing use, by creating and/or distributing user manuals describing use and operation of the Accused Devices, and by supplying warranty coverage for the Accused Devices sold in this State and in this District. 23. HTC has contributorily infringed the ’161 patent in violation of 35 U.S.C. §

271, by selling within the United States, offering for sale within the United States, and/or importing components that embody a material part of the inventions described in at least claims 5 and 7 of the ’161 patent, are known by HTC to be especially made or especially adapted for use in infringement of at least claims 5 and 7 of the ’161 patent, and are not staple articles or commodities suitable for substantial, non-infringing use, including the Accused Devices and non-staple constituent parts of those accused devices. 24. Upon information and belief, HTC is well-aware of Kodak’s patent portfolio

in this area, which has been the subject of extensive publicity and press coverage. Upon information and belief, from this and other activities, HTC had knowledge of the ’161 patent in advance of the filing of this complaint. Moreover, this complaint and an action simultaneously filed against HTC before the United States International Trade Commission, provide HTC with further notice of the ’161 patent and HTC’s infringement thereof. 25. As a result of HTC’s infringement, both directly and indirectly, Kodak has

suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable harm unless HTC’s infringement is enjoined by this Court.

6

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 8 of 14

Third Claim for Relief (Patent Infringement of U.S. Patent No. 7,742,084) 26. Kodak is the owner by assignment of the ’084 patent, entitled “Network

Configuration File for Automatically Transmitting Images from an Electronic Still Camera,” a true copy of which is attached hereto as Exhibit C. The ’084 patent was duly and legally issued on June 22, 2010. 27. HTC has infringed and continues to infringe, literally and under the doctrine of

equivalents, the ’084 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld communications devices, including, but not limited to, the HTC EVO View 4G, Flyer, Jetstream, Vivid, Amaze 4G, Desire, Evo Design 4G, Hero S, Rezound, Rhyme, Sensation 4G, and the Wildfire S (the “Accused Devices”), which embody and/or practice at least claims 1, and 7-11 of the ’084 patent in violation of 35 U.S.C. § 271. 28. HTC has induced, and continues to induce, others to infringe the ’084 patent in

violation of 35 U.S.C § 271, by taking active steps to encourage and facilitate others’ direct infringement of at least claims 1, and 7-11 of the ’084 patent with knowledge or willful blindness of that infringement, such as, upon information and belief: by contracting for the distribution of the Accused Devices for infringing sale such as by retail sales outlets, by marketing and promoting the Accused Devices and their infringing use, by creating and/or distributing user manuals describing use and operation of the Accused Devices, and by supplying warranty coverage for the Accused Devices sold in this State and in this District. 7

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 9 of 14

29.

HTC has contributorily infringed the ’084 patent in violation of 35 U.S.C. §

271, by selling within the United States, offering for sale within the United States, and/or importing components that embody a material part of the inventions described in at least claims 1, and 7-11 of the ’084 patent, are known by HTC to be especially made or especially adapted for use in infringement of at least claims 1, and 7-11 of the ’084 patent, and are not staple articles or commodities suitable for substantial, non-infringing use, including the Accused Devices and non-staple constituent parts of those Accused Devices. 30. Upon information and belief, HTC is well-aware of Kodak’s patent portfolio

in this area, which has been the subject of extensive publicity and press coverage. Upon information and belief, from this and other activities, HTC had knowledge of the ’084 patent in advance of the filing of this complaint. Moreover, this complaint and an action simultaneously filed against HTC before the United States International Trade Commission, provide HTC with further notice of the ’084 patent and HTC’s infringement thereof. 31. As a result of HTC’s infringement, both directly and indirectly, Kodak has

suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable harm unless HTC’s infringement is enjoined by this Court.

8

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 10 of 14

Fourth Claim for Relief (Patent Infringement for U.S. Patent No. 7,453,605) 32. Kodak is the owner by assignment of the ’605 patent, entitled “Network

Configuration File for Automatically Transmitting Images from an Electronic Still Camera,” a true copy of which is attached hereto as Exhibit D. The ’605 patent was duly and legally issued on April 24, 2007. 33. HTC has infringed and continues to infringe, literally and under the doctrine of

equivalents, the ’605 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld communications devices, including, but not limited to, the HTC EVO View 4G, Flyer, Jetstream, Vivid, Amaze 4G, Desire, Evo Design 4G, Hero S, Rezound, Rhyme, Sensation 4G, and the Wildfire S (the “Accused Devices”), which embody and/or practice at least claims 1-6, 9-13, 16, 17, 19, and 20 of the ’605 patent in violation of 35 U.S.C. § 271. 34. HTC has induced, and continues to induce, others to infringe the ’605 patent in

violation of 35 U.S.C § 271, by taking active steps to encourage and facilitate others’ direct infringement of at least claims 1-6, 9-13, 16, 17, 19, and 20 of the ’605 patent with knowledge or willful blindness of that infringement, such as, upon information and belief: by contracting for the distribution of the infringing mobile devices for infringing sale such as by retail sales outlets, by marketing and promoting the Accused Devices and their infringing use, by creating and/or distributing user manuals describing use and operation of the Accused

9

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 11 of 14

Devices, and by supplying warranty coverage for the Accused Devices sold in this State and in this District. 35. HTC has contributorily infringed the ’605 patent in violation of 35 U.S.C. §

271, by selling within the United States, offering for sale within the United States, and/or importing components that embody a material part of the inventions described in at least claims 1-6, 9-13, 16, 17, 19, and 20 of the ’605 patent, are known by HTC to be especially made or especially adapted for use in infringement of at least claims 1-6, 9-13, 16, 17, 19, and 20 of the ’605 patent, and are not staple articles or commodities suitable for substantial, non-infringing use, including the Accused Devices and non-staple constituent parts of those Accused Devices. 36. Upon information and belief, HTC is well-aware of Kodak’s patent portfolio

in this area, which has been the subject of extensive publicity and press coverage. Upon information and belief, from this and other activities, HTC had knowledge of the ’605 patent in advance of the filing of this complaint. Moreover, this complaint and an action simultaneously filed against HTC before the United States International Trade Commission, provide HTC with further notice of the ’605 patent and HTC’s infringement thereof. 37. As a result of HTC’s infringement, both directly and indirectly, Kodak has

suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable harm unless HTC’s infringement is enjoined by this Court.

10

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 12 of 14

Fifth Claim for Relief (Patent Infringement for U.S. Patent No. 7,936,391) 38. Kodak is the owner by assignment of the ’391 patent, entitled “Digital Camera

with Communications Interface for Selectively Transmitting Images over a Cellular Phone Network and a Wireless LAN Network to a Destination,” a true copy of which is attached hereto as Exhibit E. The ’391 patent was duly and legally issued on May 3, 2011. 39. HTC has infringed and continues to infringe, literally and under the doctrine of

equivalents, the ’391 patent, by using, selling and/or offering to sell, within the United States, and/or by importing into the United States, electronic devices for capturing and transmitting images such as mobile camera phones, tablets, and other handheld communications devices, including, but not limited to, the HTC EVO View 4G, Flyer, Jetstream, Vivid, Amaze 4G, Desire, Evo Design 4G, Hero S, Rezound, Rhyme, Sensation 4G, and the Wildfire S (the “Accused Devices”), which embody and/or practice at least claims 11, 12, and 15-18 of the ’391 patent in violation of 35 U.S.C. § 271. 40. HTC has induced, and continues to induce, others to infringe the ’391 patent in

violation of 35 U.S.C § 271, by taking active steps to encourage and facilitate others’ direct infringement of at least claims 11, 12, and 15-18 of the ’391 patent with knowledge or willful blindness of that infringement, such as, upon information and belief: by contracting for the distribution of the infringing mobile devices for infringing sale such as by retail sales outlets, by marketing and promoting the Accused Devices and their infringing use, by creating and/or distributing user manuals describing use and operation of the Accused Devices, and by supplying warranty coverage for the Accused Devices sold in this State and in this District. 11

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 13 of 14

41.

HTC has contributorily infringed the ’391 patent in violation of 35 U.S.C. §

271, by selling within the United States, offering for sale within the United States, and/or importing components that embody a material part of the inventions described in at least claims 11, 12, and 15-18 of the ’391 patent, are known by HTC to be especially made or especially adapted for use in infringement of at least claims 11, 12, 15-18 of the ’391 patent, and are not staple articles or commodities suitable for substantial, non-infringing use, including the Accused Devices and non-staple constituent parts of those Accused Devices. 42. Upon information and belief, HTC is well-aware of Kodak’s patent portfolio

in this area, which has been the subject of extensive publicity and press coverage. Upon information and belief, from this and other activities, HTC had knowledge of the ’391 patent in advance of the filing of this complaint. Moreover, this complaint and an action simultaneously filed against HTC before the United States International Trade Commission, provide HTC with further notice of the ’391 patent and HTC’s infringement thereof. 43. As a result of HTC’s infringement, both directly and indirectly, Kodak has

suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable harm unless HTC’s infringement is enjoined by this Court.

WHEREFORE, Kodak requests that the Court: 44. Adjudge that HTC has infringed and continues to infringe the asserted claims

of the ’218, ’161, ’084, ’605, and ’391 patents under 35 U.S.C. §§ 271(a), 271(b) and 271(c); 45. Preliminarily and permanently enjoin HTC from further infringement of the

218, ’161, ’084, ’605, and ’391 patents; 12

Case 6:12-cv-06021 Document 1

Filed 01/10/12 Page 14 of 14

46. damages; 47. infringement; 48. 49.

Award Kodak compensatory damages and, if necessary, an accounting of all

Award Kodak enhanced damages of treble its actual damages for willful

Award Kodak its costs and reasonable experts’ fees and attorneys’ fees; and Award Kodak such other relief as the Court deems just and proper.

PLAINTIFF CLAIMS A TRIAL BY JURY ON ALL ISSUES SO TRIABLE. Dated: January 10, 2012 Respectfully submitted,
January 10, 2012 _____________________________________ Paul J. Yesawich, III Neal L. Slifkin Laura W. Smalley HARRIS BEACH PLLC 99 Gamsey Road Pittsford, NY 14534 (585) 419-8636

Timothy Q. Delaney (Of Counsel) Laura Beth Miller (Of Counsel) BRINKS HOFER GILSON & LIONE NBC Tower, Suite 3600 455 North Cityfront Plaza Drive Chicago, IL 60611 (312) 321-4200

13

You're Reading a Free Preview

Download
scribd
/*********** DO NOT ALTER ANYTHING BELOW THIS LINE ! ************/ var s_code=s.t();if(s_code)document.write(s_code)//-->