Polaroid Corp. v. Eastman Kodak Co. - Oppedahl Patent Law Firm LLC

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Intellectual Property Library ISSN 1526-8535 3,362,821, Land, diffusion transfer processes, damages awarded. 3,578,540, Land, color photographic product formed by diffusion transfer, damages awarded. 3,594,165, Rogers, novel photographic products and processes, damages awarded. 3,689,262, Rogers, photographic products and processes for color diffusion transfer, damages awarded. 3,753,392, Land, film advancing apparatus, damages awarded. 3,810,211, Wareham and Paglia, self-developing camera system, damages awarded. Case History and Disposition: Page 1482 Action by Polaroid Corp. against Eastman Kodak Co. for patent infringement. Following entry of judgment against defendant, damages are now awarded. Prior decisions: 228 USPQ 305 , 229 USPQ 561 , 5 USPQ2d 1080 . Attorneys: Herbert F. Schwartz, Edward F. Mullowney, Patricia A. Martone, Robert J. Goldman, David K. Barr, Mark H. Bloomberg, Jane A. Massaro, Duane-David Hough, Mitchell P. Brook, Edward J. DeFranco, Caroline M. Sun, and David A. Loewenstein, of Fish & Neave, New York, N.Y.; William J. Cheeseman, Joseph D. Halpern, and Nan Seuffert, of Foley, Hoag & Eliot, Boston, Mass., and Nan B. Chequer, of Tyler, Cooper & Alcorn, Stamford, Conn., for plaintiff. Richard E. Carlton, James E. Akers, Richard H. Klapper, Robert A. Sacks, Karen A. Popp, Karen Patton Bogle, and Timothy E. Shell, of Sullivan & Cromwell, New York, N.Y.; Robert S. Frank, Jr., of Choate, Hall & Stewart, Boston, Mass., for defendant. Opinion By: Mazzone, J. [1 of 2] Opinion Text Copyright 2003, The Bureau of National Affairs, Inc. Reproduction or redistribution, in whole or in part, and in any form, without express written permission, is prohibited except as permitted by the BNA Copyright Policy. http://www.bna.com/corp/index.html#V 4
Intellectual Property Library ISSN 1526-8535 I. INTRODUCTION On April 26, 1976, Polaroid Corporation ("Polaroid") filed its complaint charging that Eastman Kodak Company ("Kodak") had infringed twelve Polaroid patents relating to integral instant cameras and film. Over the next five years, the parties engaged in extensive discovery on the issues of liability and infringement. Those issues were tried before Judge Rya Zobel between October 5, 1981 and February 26, 1982. On September 13, 1985, Judge Zobel, in a comprehensive and carefully detailed Memorandum of Decision, found Kodak had infringed twenty claims of seven valid Polaroid patents. Two patents were found invalid. One was found not infringed. One was found invalid before trial and Polaroid withdrew its claims on another patent before trial. Judge Zobel did not assign to any single patent credit for the success of integral instant cameras and film, but found that integral instant photography, as commercialized by Polaroid and Kodak, relied on the inventions of the seven patents held valid and infringed. Judgment was entered on October 11, 1985, and, on January 8, 1986, Kodak was enjoined from further infringement of the five patents which had not yet expired. The damages issues were reserved to the post-liability phase of the bifurcated trial. Polaroid Corp. v. Eastman Kodak Co., 641 F.Supp. 828 [ 228 USPQ 305 ] (D. Mass. 1985), stay denied, 833 F.2d 930 [ 5 USPQ2d 1080 ] (Fed. Cir.), aff'd, 789 F.2d 1556 [ 229 USPQ 561 ] (Fed. Cir.), cert. denied, 479 U.S. 850 (1986). Page 1483 The story of this case to date is told in the foregoing trial and appellate opinions. That story will not be retold here except where necessary for a complete understanding of the particular issue under consideration. Suffice to say that this case involves not only the patents, but the history of a new industry, that of integral instant photography. It involved from the outset the only two competitors in the field, locked in a bitter, unyielding exhausting and expensive litigation for over fourteen years, and the struggle has not yet ended. This is the latest, but probably not the last time the parties confront each other. The precise issues that were reserved for this phase of the litigation are: 1. Whether Kodak's infringement of any one or more of the patents in suit was willful and deliberate. 2. The amount of damages adequate to compensate Polaroid for Kodak's infringement, together with interest, and whether such damages should be increased up to three times the amount found, all in accordance with 35 U.S.C. §284. 3. Whether costs shall be taxed against either party. 4. Whether Polaroid is entitled to its reasonable attorneys' fees because this is an "exceptional case" within the meaning of 35 U.S.C. §285, and if so, the quantum of those fees. Polaroid Corp., supra, 641 F.Supp. at 878. The overriding issue, which therefore commands the greatest portion of this opinion, is determining the amount of damages adequate to compensate Polaroid for Kodak's infringement. In this introduction, I describe the trial as it was conducted. I follow with Copyright 2003, The Bureau of National Affairs, Inc. Reproduction or redistribution, in whole or in part, and in any form, without express written permission, is prohibited except as permitted by the BNA Copyright Policy. http://www.bna.com/corp/index.html#V 5
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