In reminder, there is a whole constellation of pending actions 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’”).

Construction of the claim terms is the present controversy as well as whether or not a decision on claim terms is properly subjected to the prior Motions for Summary Judgment which were granted in part and denied in part.

RIM and Apple are arguing that they are properly subject to these Motions and to the Initial Determination of the Commission under Commission Rule 210.18.

This part was of interest in RIM’s Brief on the Issues Under Commission Review of the Initial Determination on Claim Construction:

Kodak turns to district court practice arguing that ruling on claim construction via summary determination runs afoul of Fed. R. Civ. P. 56 and that the Federal Circuit does not want interlocutory appeals of claim construction.

But Kodak misses the point for two reasons. First, the Commission operates under the Commission Rules, not the Federal Rules. Second, there is no possibility of interlocutory review of the Commission’s determination on claim construction by the Federal Circuit.

Fed. R. Civ. P. 56, which states in pertinent part that:

A party claiming relief may move, with or without supporting affidavits, for summary judgment on all or part of the claim.

Fed. R. Civ. Pr. 56(a)(emphasis added). This is entirely different from Commission Rule 210.18 which provides that a party may move for summary determination “upon all or any part of the issues to be determined in the investigation.” Commission Rule 210.18(a). As discussed above, and unlike Fed. R. Civ. P. 56, Commission Rule 210.18 (a) is not limited to a claim, but broadly encompasses any issue or part thereof to be determined in the investigation.

RIM goes on to argue that an appeal would not be possible until there was a final Commission decision on the whole matter and that decisions on claim construction do not automatically dispose of the whole matter and would not do so in this case.

Arguing against this, the Office of Unfair Import Investigation’s Brief states:

Rule 210.18 concerns “issues to be determined” and in OUII’s view, claim construction is but a necessary underpinning to the resolution of certain issues such as infringement, invalidity, or the technical prong of the domestic industry argument (“technical prong”).  Standing alone, claim construction does not appear to fall within the scope of “issues to be determined” under the rule.  In particular, a claim construction ruling does not resolve any of the issues involved in a violation determination, nor does it result in one party successfully proving issues such as infringement, invalidity, or the technical prong.  Thus, following a ruling on claim construction there is no clear aggrieved party.  From the Judge’s and Commission’s perspective, the litigating parties remain in the same position as they were prior to a claim construction ruling.

I can see the validity of both arguments. However, the OUII seems to be, on the whole, straining at technicalities. I believe a better analogy would be civil law practice in the area of declaratory judgments in which the rights and status of the parties, including construction of contract terms (which seems to be a fair analogy), can be the subject of motions for summary judgment. While a final adjudication of the whole controversy, or even the whole of a part of the controversy, it is not quite correct to say that the status of the parties remains the same. The one who successfully petitions for a favorable claim construction has a distinct legal victory.

The OUII also states that there is no evidentiary hearing in a summary disposition hearing which is necessary for an issue such as this, without explaining exactly why this is so. Briefs and oral arguments are allowed as well as supporting affidavits, so honestly, that parting shot seems to be a bit of fluff.

The terms under dispute include:

  • Motion Processor
  • Still Processor
  • At Least Three Different Colors
  • Capture Button
  • Initiating Capture
  • Each Captured Image Having A First Number of Color Pixel Values Provided In a First Color Pattern
  • Captured Image
  • First Number of Color Pixel Values
  • First Color pattern

Apple noted in its Response to Notice of Commission to Review Initial Determination:

While the Chief ALJ did not adopt verbatim the constructions proposed by Apple (or the other parties), Apple support affirmance of the construction in the 703 ID on all but one term: “capture button.”  Kodak and the Staff have already attacked the Chief ALJ’s construction of “motion processor,” “still processor, “ “at least three different colors,” and “initiating capture…” in their petitions for review by the Commission.  Apple’s response to Kodak’s and the Staff’s petitions for review illustrated why Kodak’s and the Staff’s criticisms of the Chief ALJ’s findings on those terms are without merit.

Also interesting is the dispute regarding the meaning of the term “button” as it would have been intended in 1994, when the patent term in question was authored.  At that time, buttons were “mechanical elements that could be depressed or partially depressed.”  Thus, Apple is disputing that their touch screens are indeed “buttons” as intended by the inventors.  Further, the patent “specification consistently describes capture buttons as mechanical elements—it does not redefine buttons as a purely functional, generic user control.”

For those interested in the more minute details of the upcoming hearing, the following items contain Apple’s Witness List, Exhibit List, and Witness Summaries.

Respondent Apple Inc.’s Witness Summaries

Respondent Apple Inc.’s Pre-Hearing Statement

Additionally, this is the Initial Markman hearing determination decision which is the source of these latest wrangling.

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’”).

Apple had served a Subpoena for records upon non-party Zoran Corporation to which it was objecting. Although their objections were due by August 2, 2010, there are none in the records indicating that most likely an agreement was reached to limit the scope of production. Apple has also agreed to withdraw its Motion to Compel the depositions of Kodak witnesses Kenneth Parulski, David Woords, and Timothy Tredwell.

Apple and Kodak have agreed to participate in mediation in August, 2010. As with the above ITC disputer (337-703), claim construction is also at issue with Kodak submitting its proposed constructions and the filing of a joint statement of Apple and Kodak on agreed and disputed claim constructions.

A schedule is in place 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

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’”).

I had last reported that Kodak filed a Counterclaim to Apple’s Amended Counterclaim as new patents were introduced into the case at that time. Apple responded to the Counterclaims with general denials. An Agreed Protective Order was entered regarding the disclosure and use of discovery materials. What I found interesting in this order was the following,

16. MOCK JURORS
(a) A party may not disclose to mock jurors any original, as-produced materials or information (including, for example, documents, deposition testimony, or interrogatory responses) produced by another party designed as CONFIDENTIAL INFORMATION UNDER PROTECTIVE ORDER or CONFIDENTIAL BUSINESS INFORMATION CONTAINING HIGHLY CONFIDENTIAL-SOURCE CODE INFORMATION. A party may, however, disclose to mock jurors arguments and materials prepared by its outside counsel that are derived from CONFIDENTIAL BUSINESS INFORMATION UNDER PROTECTIVE ORDER, so long as the derivative materials do not include the as-produced information itself.
(b) Before hearing arguments or reviewing materials that were derived from confidential business information, each mock juror must sign an undertaking or agreement agreeing not to publicly disclose such arguments and materials and to keep such arguments and materials confidential.

It would be very interesting indeed to read the results of any mock jury research conducted in these sorts of cases. The tenor of this case is markedly different from the juvenile manner of Psystar in their disrespect of confidential work product in that both are legitimate companies respecting each other’s need to protect such investments, as opposed to two punks wanting a free ride. I know, I know, say how I really feel.

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’”).

A stay has been entered in this case until such time as a final, unappealable decision is reach in Apple’s parallel proceeding against Eastman Kodak Company in the U.S. International Trade Commission, entitled Certain Digital Imaging Devices and Related Software, Investigation No. 337-TA-717. Additionally, the case has been reassigned to a new Judge (still within the Northern District despite Kodak’s request to transfer the case to the Western District of New York) with an Order requiring a status update to be filed in August despite the Stay.


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.