kodak sues apple and htc over smartphone camera patents
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UNITED STATES DISTRICT COURTWESTERN DISTRICT OF NEW YORK
EASTMAN KODAK COMPANY,
Plaintiff,
vs.
APPLE INC.,
Defendant.
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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. 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)
(co llectively 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. Kodaks innovations have continued in the age of digital photography. In
1977, Kodak designed and built the first operating digital camera. Kodaks significant
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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.
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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
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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 Kodaks 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
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communications devices, including, but not limited to, the iPad 2, iPhone 3G, iPhone 3GS,
iPhone 4, iPhone 4S, and the iPod touch (4 th 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 Kodaks 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
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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 Apples infringement thereof.
21. As a result of Apples infringement, both directly and indirectly, Kodak has
suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable
har m unless Apples 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 (4 th 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 act ive steps to encourage and facilitate others
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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 Kodaks 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 Apples infringement thereof.
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27. As a result of Apples infringement, both directly and indirectly, Kodak has
suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable
harm unless Apples infringemen t 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
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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 Kodaks 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:
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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. Award Kodak compensatory damages and, if necessary, an accounting of all
damages;
37. Award Kodak enhanced damages of treble its actual damages for willful
infringement;
38. Award Kodak its costs and reasonable experts fees and attorneys f ees; and
39. 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 9, 2012
Respectfully submitted,
_____________________________________Paul J. Yesawich, IIINeal L. SlifkinLaura W. SmalleyHARRIS BEACH PLLC99 Gamsey RoadPittsford, NY 14534(585) 419-8636
Timothy Q. Delaney ( Of Counsel )Laura Beth Miller ( Of Counsel )
BRINKS HOFER GILSON & LIONE NBC Tower, Suite 3600455 North Cityfront Plaza DriveChicago, IL 60611(312) 321-4200
Case 6:12-cv-06020-DGL Document 1 Filed 01/10/12 Page 11 of 11
January 10, 2012
s/Neal L. Slifkin
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UNITED STATES DISTRICT COURTWESTERN DISTRICT OF NEW YORK
EASTMAN KODAK COMPANY,
Plaintiff,
vs.
HTC CORPORATION a/k/a HIGH TECHCOMPUTER CORP., HTC AMERICA,INC., and EXEDEA, INC.,
Defendants.
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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.
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4. Kodaks innovations have continued in the age of digital photography. In
1977, Kodak designed and built the first operating digital camera. Kodaks 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.
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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
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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. Venue is proper in this District under 28 U.S.C. 1391(b), (c), (d), and
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
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.
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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 Kodaks 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 HTCs infringement thereof.
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19. As a result of HTCs infringement, both directly and indirectly, Kodak has
suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable
harm unless HTCs 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
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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 Kodaks 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 HTCs infringement thereof.
25. As a result of HTCs infringement, both directly and indirectly, Kodak has
suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable
harm unless HTCs infringement is enjoined by this Court.
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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.
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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 Kodaks 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 HTCs infringement thereof.
31.
As a result of HTCs infringement, both directly and indirectly, Kodak has
suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable
harm unless HTCs infringement is enjoined by this Court.
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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
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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 Kodaks 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 HTCs infringement thereof.
37. As a result of HTCs infringement, both directly and indirectly, Kodak has
suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable
harm unless HTCs infringement is enjoined by this Court.
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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.
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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 Kodaks 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 HTCs infringement thereof.
43.
As a result of HTCs infringement, both directly and indirectly, Kodak has
suffered, and will continue to suffer, substantial damages. Kodak will also suffer irreparable
harm unless HTCs 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;
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46. Award Kodak compensatory damages and, if necessary, an accounting of all
damages;
47. Award Kodak enhanced damages of treble its actual damages for willful
infringement;
48. Award Kodak its costs and reasonable experts fees and attorneys fees; and
49. 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,
_____________________________________ Paul J. Yesawich, III
Neal L. SlifkinLaura W. SmalleyHARRIS BEACH PLLC99 Gamsey RoadPittsford, NY 14534(585) 419-8636
Timothy Q. Delaney ( Of Counsel )Laura Beth Miller ( Of Counsel )BRINKS HOFER GILSON & LIONE
NBC Tower, Suite 3600455 North Cityfront Plaza DriveChicago, IL 60611(312) 321-4200
Case 6:12-cv-06021 Document 1 Filed 01/10/12 Page 14 of 14
January 10, 2012
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