Patent Law

Big Cheese

By Gary Odom and Jordan Kuhn

St. Clair Intellectual Property Consultants thought it had a tiger by the tail - a tidy patent portfolio for digital camera photo storage. St. Clair started a shotgun enforcement campaign, including against Kodak. Kodak claimed it had acquired rights to the patents through agreement with the inventors' former employers, Mirage Systems. That froze St. Clair's Hail Mary on the digital photo industry.

Mirage had originally filed the ownership fracas against St. Clair in November 2004. Kodak later substituted as plaintiff.

St. Clair's story is that the inventors had assigned their rights to their company in 1991. In November 1995, St. Clair declared it had acquired all rights to the patents for $60,000.

The Kodak-St. Clair trial was scheduled to begin in January 2008, but that fizzled out on a memo of understanding. Friday, Kodak announced a photo finish - St. Clair gets patent enforcement rights, and Kodak gets three licenses: one for itself, along with two licenses to grant to whomever it chooses.

Prior to the Kodak snafu, St. Clair had dinged Sony $25 million by jury trial, Canon $34.7 million, and Fuji Photo Film $3 million. Canon later settled for an undisclosed pinch. In the same rodeo as Canon, Casio, Seiko-Epson, Kyocera, Minolta, Nikon, and Olympus settled before trail.

Now unthawed for subjugation and facing the wrath of St. Clair are: Samsung Electronics, Matsushita Electric, Nokia, HP, Siemens, LG, Motorola, T-Mobile, and BenQ.

The patents are: 5,138,459; 6,094,219; 6,233,010; 6,323,899; 6,496,222.

Full post as published by The Patent Prospector on May 18, 2008 (boomark / email).