Kodak files lawsuit amid Apple, FlashPoint patent ownership dispute

By Caroline Salls

Pittsburgh, June 18 - Eastman Kodak Co. filed a lawsuit on Monday against Apple Inc. and FlashPoint Technology, Inc. "to protect Kodak and its affiliated debtors from attempts by Apple and FlashPoint to delay and derail Kodak's efforts to sell a collection of Kodak patents relating to digital imaging, known as the digital capture portfolio," according to a filing with the U.S. Bankruptcy Court for the Southern District of New York.

Last week, the bankruptcy court denied Kodak's motion for a ruling that Apple and FlashPoint have no interest in the patents held in Kodak's digital capture portfolio.

Specifically, Kodak asked the court in May to enter an order in aid of its planned sale of patents related to digital cameras.

As previously reported, Kodak also claimed in that motion that Apple and FlashPoint were trying to "delay and derail" the company's efforts to sell the patent portfolio.

Ownership claims

In Monday's complaint, Kodak said that Apple is the single largest infringer of patents in the digital capture portfolio and also a potential purchaser of those patents.

The company said the patents in the digital capture portfolio have been openly licensed and litigated by Kodak for many years.

However, the company said that Apple appeared in Kodak's Chapter 11 proceedings and claimed that it, not Kodak, owned 10 patents.

The company said FlashPoint also claimed to be the owner of those patents.

According to the complaint, Apple's claims arise from joint development work between Kodak and Apple that occurred in the early 1990s, and FlashPoint contends that a 1996 agreement between Apple and FlashPoint assigned any rights Apple has in the claimed Kodak patents to FlashPoint.

"Both Apple and FlashPoint were on constructive or actual notice of any potential claims to the claimed Kodak patents many years ago, and therefore all of their ownership claims are barred by the applicable statutes of limitations and/or the equitable doctrine of laches," Kodak said in the lawsuit.

Difficult position

Kodak said that Apple's strategy has been to use its substantial cash position to delay the payment of royalties to Kodak as long as possible, as well as to interfere with the debtors' planned sale of the portfolio.

"Apple and FlashPoint are seeking to benefit from Kodak's difficult financial position, which will be exacerbated if the debtors cannot obtain fair value for the patents in the digital capture portfolio," Kodak said in the complaint.

Ruling sought

Kodak said it is asking the court to rule that Apple and FlashPoint have no interest in any of the 10 claimed patents and that the Kodak debtors are permitted to sell the patents free and clear of any Apple or FlashPoint interest.

Kodak is also seeking an injunction barring Apple and FlashPoint from asserting ownership claims under any theory, including inventorship, to the claimed Kodak patents.

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

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