Kodak may face ITC, district court patent infringement suits by Apple

By Caroline Salls

Pittsburgh, Feb. 15 - Apple Inc. is requesting court approval to file a patent infringement lawsuit against Eastman Kodak Co., according to a Tuesday filing with the U.S. Bankruptcy Court for the Southern District of New York.

"Apple is the owner of a number of valuable patents that Kodak is infringing in the course of its daily operations," Apple said in the motion.

Apple said the patents in question cover technologies that are used in the printers, digital cameras, digital video cameras and digital picture frames that Kodak imports to and markets and sells in the United States.

To prevent Kodak's alleged violation of Apple's patent rights and to minimize the related harm to Apple, Apple said it intends to file a complaint with the International Trade Commission (ITC), which it said is the quasi-judicial federal agency charged with policing unfair practices in import trade.

Apple said it would ask the ITC to exercise its police and regulatory powers to issue an exclusion order directing the U.S. Customs and Border Protection to bar the Kodak products that infringe on Apple's patents from entry into the United States; issue a cease-and-desist order prohibiting Kodak from marketing, distributing, selling, offering for sale, warehousing inventory for distribution or otherwise transferring or bringing infringing products into the United States; and impose a bond requirement on Kodak's importation of infringing products during a 60-day presidential review period.

Because the ITC's jurisdiction only extends to the regulation of imported goods, Apple said it is also seeking approval to file a lawsuit against Kodak in the U.S. District Court for the Southern District of New York.

Through that lawsuit, Apple said it would seek a permanent injunction against Kodak's alleged continuing post-bankruptcy violation of Apple's patent rights and seek post-bankruptcy damages.

Since the proposed ITC action falls within the "police and regulatory powers" exception to the automatic stay imposed by Kodak's bankruptcy filing, Apple said court-ordered relief from the stay is not required before it launches the ITC action.

In addition, Apple said the automatic stay should not apply to the proposed district court lawsuit because the relief sought is limited to an injunction and post-bankruptcy damages.

Apple said it is filing the motion "out of an abundance of caution" before submitting its complaint to the ITC and asking the ITC to begin an investigation.

"By continuing to violate Apple's patents post-petition, Kodak is engaging in unlawful activity," Apple said in the motion.

"The law is clear that a debtor cannot hide behind the automatic stay with respect to claims arising from the debtor's post-petition conduct of its business."

If the court does rule that the automatic stay applies, Apple said cause still exists to allow its file its complaint with the ITC.

A hearing is scheduled for Feb. 28.

Kodak, a Rochester, N.Y.-based imaging technology products and services provider to the photographic and graphic communications markets, filed for bankruptcy on Jan. 19. Its Chapter 11 case number is 12-10202.

© 2015 Prospect News.
All content on this website is protected by copyright law in the U.S. and elsewhere. For the use of the person downloading only.
Redistribution and copying are prohibited by law without written permission in advance from Prospect News.
Redistribution or copying includes e-mailing, printing multiple copies or any other form of reproduction.