Free Declaration - District Court of Delaware - Delaware

Case 1:04-cv-01436-JJF

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PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C.
Before the Honorable Robert L. Barton, Jr. Administrative Law Judge

1
In the Matter of
)

CERTAIN DIGITAL CAMERAS AND ) ) COMPONENT PARTS THEREOF

*

I

Inv, No. 337-TA-593

1 1
RESPONSE OF EASTMAN KODAK COMPANY TO THE COMPLAINT AND'NOTKE O F INVESTIGATION
Respondent Eastman Kodak Company ("Kodak"), pursuant to 19 C.F.R. $210.13, or its Response states as follows:
Rule 210.13 Statement

By providing the following information, Kodak intends to suppIy only statistical and

other data required by or requested inRule 210.13. Kodak specifically denies that any of the supplied data refers or relates to any unlawful act under Section 337 or otherwise, and Kodak specifically denies that its products inf?inge any of the claims of US. Patent Nos. 5,138,459 (the "'459 patent"), 6,094,2 19 (the "'219 patent"), 6,323,899 (the "'899 patent"), 6,496,222 (the
"'222 patent") and 6,233,010 (the "'01 0 patent") (collectively, the `FRoberts Patents").

In accordance with the requirements of Rule 210.13@), Kodak states that it believes that cameras having a sales revenue of approximately

[REDACTED]

[REDACTED] `wereimported into the United States and sold in 2006. The accused articles are
believed to be classified under Harmonized Tariff Schedule No. 8525.80.40 et seq. Kodak states

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PUBLIC VERSION

[REDACTED]

Response to Notice of 1nvestig;ation

To the extent the Notice of Investigation contains any allegations separate and apart f o rm those contained in the Complaint, Kadak denies such allegations.
Response to Complaint

To the extent the headings used in the Complaint contain any allegations, Kodak denies

such allegations. Kodak includes the headings from the Complaint in this Response solely for
the purpose of clarity.

1. INTRODUCTION
1.1.

Kodak states that Section 337 of the TariffAct, as amended, 19 U.S.C. $1337

("Section 337") speaks for itself. Kodak denies Complainant St. Clair Intellectual Property Consultants, Inc. ("St. C1air")'s characterizations of this statute, as well as the allegations of liability under it. Kodak denies th2t it has violated Section 337.

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PUBLIC VERSION
1.2.

Kodak lacks knowledge or information sufficient to form a belief as to the truth of

St. Clair's reasons for bringing this action. Kodak denies St. Clair's allegations of unlawfuI and

unauthorized activities in the first sentence of Paragraph 1.2. Kodak states that the Roberts Patents speak or themselves. Kodak admits that copies of the Roberts patents were attached to

the Complaint as Exhibits 1-5.
I .3

Kodak states that the claims of the Roberts Patents speak for themselves. Kodak

states that the remainder of Paragraph 1.3 is a legal conclusion to which no response is required,
1.4

Kodak states that the named inventors on the Roberts Patents are Marc K.

Roberts, Matthew A. Chikosky, and Jerry A. Speasl (the "Inventors"). Kodak admits rhat the Roberts Patents, on their face, reflect a filing date of November 20, 1990 and that the Inventors conceived of the subject matter claimed in the Roberts Patents, formed Personal Computer Cameras, Inc. ("PCC"), and filed a patent application while employed by Mirage Systems, Inc. ("Mirage"). Kodak admits that the inventors purpoited to assim their interest in Roberts Patents

to PCC, but denies that the Inventors had any rights in the Roberts Patents; the Inventors
assigned io Mirage all inventions conceived andlor developed during their employment with Mirage that related to Mirage's business or arose out of work performed for Mirage. Kodak denies the remaining allegations in the third sentence of Paragraph I .4.
1.5

Kodak admits that PCC purported to assign the right, title, and interest in and to

the Roberts Patents to St. Clair, but denies that PCC had any rights in the Roberts Patents; the Inventors assigned to Mirage all inventions conceived and/or developed during their employment

w t Mirage that related to Mirage's business or arose out of work performed for Mirage. Kodak ih
denies the remaining allegations in the third sentence of Paragraph 1.5.

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PUBLIC VERSION
1.6

Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 1.6.
1.7

Kodak admits that it sells digital cameras manufactured abroad and imported into

the United States. Kodak denies the remaining allegations contained in the first sentence of Paragraph 1.7. Kodak denies the allegations contained in the second sentence of Paragraph 1.7.

Kodak lacks sufficient knowledge or information to form a belief as to the truth of the remedies
sought by St. Clair. Kodak denies that its products infringe the Roberts Patents.
2. COMPLA JNANT ST. CLAIR
2.1

Kodak denies that St. Clair is the titleholder to the Roberts Patents, Kodak lacks

knowledge or information sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 2.1.

3 RESPONDENT KODAK .
3.1

Kodak admits the allegations of the first and second sentences of Paragraph 3,1,

Kodak admits that it imports and sells cameras manufactured in Asia, but denies that its products infringe the Roberts Patents.

4. BACKGROUND OF THE ROBERTS PATENTS
'

a. Nontechnical description of the Roberts Patents

4.1

Kodak admits that the Roberts patents relate to digital camera technoIogy and that

they each have a common specification. Kodak states that the Roberts Patents speak for themselves.

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PUBLIC VERSION
4.2 Kodak states that the Roberts Patents speak for themseIves. Kodak denies St.

Clair's characterizations of the Roberts Patents and denies the remaining allegations of Paragraph 4.2,
4.3

Kodak states that the Roberts Patents speak for themselves. Kodak denies St.

Clair's characterizations of the Roberts Patents and denies the remaining allegations of Paragraph 4.3. 4.4
Kodak states that the Roberts Patents speak for themselves. Kodak denies St.

Clair's characterizations of the Roberts Patents and denies the remaining allegations of Paragraph 4.4.

45 .

Kodak admits that, in Eastman Kodak Co. v. Speasl et al,, Kodak has asserted that

the Inventors misappropriated from Mirage the concept of a digital camera that can format data

into one of a plurality of file formats which can be used in muttiple applications.
4.6 4.7

Kodak denies the allegations contained in Paragraph 4.6.

Kodak denies the allegations contained in Paragraph 4.7.
Kodak states that the Roberts Patents speak for themseives. Kodak states that the

4.8.

remainder of Paragraph 4.8 is legal conclusion to which no response is required.

b. PCC's and S t . Clair's History with the Roberts Patents
4.9 Kodak admits that while the Inventors were err?p!oyec! by Mirage, they formed

PCC. Kodak lacks knowledge or information sufficient to form a belief as to the truth of the
remaining allegations contained in Paragraph 4.9.

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PUBLIC VERSION
4.10

Kodak admits that, while the Inventors were employees of Mirage, St. Clair

worked with PCC to find and develop business opportunities. Kodak lacks knowledge or
information sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 4.10.

. 4.1 1 Kodak admits that St. Clair invested in PCC. Kodak lacks sufficient knowledge
or information to form a belief as to the truth of the remaining allegations contained in Paragraph
4.11.
4.12

Kodak admits that it was approached by PCC in 1992. Kodak lacks sufficient

knowledge or information to form a belief 8s to the truth of the remaining allegations contained in Paragraph 4.12.
4.13
4.14

Kodak denies the alIegations contained in Paragraph 4.13.
Kodak admits that Exhibit 13 to the Complaint purports to be a letter fiom Mr.

Lewis to Mr. Roberts, dated January 15, 1992, and states that Exhibit 13 speaks for itself. Kodak

denies the remaining allegations contained in Paragraph 4-14.
4.15

Kodak admits Exhibit 14 to the Complaint purports to be a written agenda for a

PCC meeting at Kodak. Kodak states that Exhibit 14 speaks for itself. Kodak denies the
remaining allegations contained in Paragraph 4.15.
4.16

Kodak admits that Exhibit 15 to the Complaint purports to be a letter from MT.

Roberts to Mr. Lewis, dated Febrwary 13, 1992, and states that Exhibit 15 speaks for itself,
Kodak denies the remaining allegations contained in Paragraph 4.16.

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PUBLIC VERSION
4.17

Kodak admits that Exhibit 16 to the Complaint purports to be a letter from Mr.

Lewis to Mr. Roberts, dated March 18, 1992, and states that Exhibit 16 speaks or itself. Kodak
denies the remaining allegations contained in Paragraph 4.17. 4.18 Kodak admits that Exhibit 16 to the Complaint purports to be a letter from Mr.

Lewis to Mr. Roberts, dated March 18, 1992, and states that Exhibit 16 speaks for itself, Kodak denies the remaining allegations contained in Paragraph 4.18,
4.19

Kodak denies the alIegations contained in Paragraph 4.19. Kodak admits that Exhibit 18 to the Complaint purports to be a letter firom Mr.

4.20

Speasl to Mr. Lewis, dated August 17, 1.992, and states that Exhibit 18 speaks for itself. Kodak denies the remaining allegations contained in Paragraph 4.20. 4.21 Kodak states that Exhibit I9 speaks for itself. Kodak denies the remaining

allegations contained in Paragraph 4.21 4.22 Kodak admits that Exhibit 19 to the Comp!aint purports to be a letter fromMr.

Lewis to Mr. Speasl, dated September 11, 1992, and states that Exhibit 19 speaks for itself.
Kodak denies the remaining allegations contained in Paragraph 4.22.
4.23

Kodak admits that Exhibit 20 to the Complaint purports to be a Ietter from Mr,

Woods to Mr. Speasl, dated October 7, 1992, and states that the letter speaks for itself, Kodak
denies the remaining allegations contained in Paragraph 4.23. 4.24 Kodak lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in the first and second sentences of Paragraph 4.24. Kodak admits that

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PUBLIC VERSION
Exhibit 22 to the Complaint purports to be a letter from Mr. Roberts to Mr. Kelly, dated February

17, 1993, and states that Exhibit 22 speaks for itself. Kodak denies the remaining allegations
contained in Paragraph 4.24. 4.25
4.26

Kodak denies the allegations contained in Paragraph 4.25.
Kodak denies that PCC owned the Roberts Patents or any "digital camera

technology." Kodak denies that PCC and/or Aura openly marketed the patents or any digital camera technology. Kodak lacks sufficient knowledge or information to form a belief as to the truth of the remaining allegations contained in Paragraph 4.26. 4.27 Kodak denies that PCC owned the Roberts Patents, Kodak lacks sufficient

knowledge or information to form a belief as to the truth of the remaining allegations contained

in Paragraph 4.27.
4.28 Kodak admits that St. Clair purported to purchase from PCC all right, title, and

interest in and to the Roberts Patents, and states that the Patent Purchase Agreement speaks for

itself. Kodak denies that this purported assignment gave St. Clair any right, title, or interest in or to the Roberts Patents; the Inventors assjgned to Mirage all inventions conceived and/or
developed during their employment at Mirage that related to Mirage's business or arose out of

work performed for Mirage, and PCC never had any rights to the Roberts Patents. Kodak lacks
sufficient knowledge or information to form a belief as to the truth of the remaining allegations contained in Paragraph 4.28.

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PUBLIC VERSION
4.29

Kodak lacks sufficient knowledge or information to form a belief as to the truth of

the alleged due diligence conducted by St. Clair, and states that St. Clair had notice of the Inventors' assignment to Mirage.
4.30

Kodak admits that St. Clair had become familiar with PCC,and that St. Clair had

knowledge of PCC's investors, of PCC's secret incorporation, of the purported assignment of the

Roberts Patents to PCC, and of the fact that the inventors worked for Mirage and conceived of
the invention during the course of their employment. Kodak denies that PCC had public marketing and press relating to any "patented technology." Kodak lacks sufficient knowledge or information to form a belief as to the tnith of the remaining allegations in Paragraph 4.30.
4.31
Kodak lacks sufficient knowledge or information to form a belief as to the truth of

the allegations contained in Paragraph 4.31.
4.32

Kodak lacks sufficient knowledge or information to form a belief as to the truth of

the alleged communications between Mr. Speasl and St. Clair. Kodak denies the remaining
allegations contained in Paragraph 4.32.
4.33

Kodak lacks sufficient knowledge or information to form a belief as to the truth of

the alleged communications between Mr. Speasl and St. Clair. Kodak denies the remaining
aIlegations contained in Paragraph 4.33.
4.34

Kodak lacks sufficient knowledge or information to form a belief as to the truth of

the alleged communications between Mr.Speasl and St. Clair. Rod& denies the remaining
allegations contained in Paragraph 4.34.

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PUBLIC VERSION
4.35

Kodak Iacks sufficient knowledge or infomation to form a belief as to the truth of

the alleged communications between Mr. Speasl and St. Clair. Kodak denies the remaining allegations contained in Paragraph 4.35,

4.36

Kodak Iacks sufficient knowledge or information to fony a belief as to the truth of

the alleged communications between Mr. Speasl and St. Clair. Kodak denies the remaining allegations contained in Paragraph 4.36.
4.37

Kodak lacks sufficient knowledge or information to form a belief as to the truth of

the alleged communications between Mr. Speasl and St. Clair. Kodak denies the remaining allegations contained in Paragraph 4.37.
4.38

Kodak lacks sufficient knowledge or information to form a belief as to the truth of

the alIegations contained in Paragraph 4.38.
4.39

Kodak denies that St. Clair received a valid warranty or representation of title

from PCC, since St. Clair had notice that PCC had no title to the Roberts Patents. Kodak lacks
sufficient knowledge or information to form a belief as to the truth of the remaining allegations contained in Paragraph 4.39
4.40

Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in the first sentence regarding St. Clair's Patent Purchase Agreement

with PCC. Kodak admits that St. Clair purported to record its alleged assignment on January 16,

1996, but denies that it was timely and denies that the alleged assignment assigned any actual
rights to the Roberts Patents to St. Clair. Kodak states that 35 U.S.C, 261 speaks for itself, and Kodak denies St. Clair's characterization of the statute. Kodak denies the remaining allegations

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PUBLiC VERSKON
contained in the first sentence of Paragraph 4.40. Kodak lacks knowledge or information sufficient to form a belief as to the truth of the allegations contained in the last sentence of Paragraph 4.40.
5. THE ROBERTS PATENTS
5.1

Kodak states that the `459 patent speaks for itself. Kodak states that the `459

patent, on its face, indicates that it issued from U.S. application Serial No. 07/6 15,848, filed on November 20, 1990. Kodak states that the `459 patent, on its face, indicates that it issued August
1 1, 1992. Kodak denies that the `459 patent was "duly and legally issued to PCC, as assignee of

the hventors."
5.2

Kodak denies the allegations contained in the first sentence of Paragraph 5.2.

Kodak admits that Exhibit 8 purports to be papers filed with the PTO, but denies the remaining allegations contained in Paragraph 5.2.
5.3

Kodak states that the `219 patent speaks for itself. Kodak states that the '219

patent, on its face, indicates that it issued from U.S. application Serial No. 08/651,562, filed May 22, 1996, which is a continuation of U.S. application Serial No, 08/098,787, filed July 29, 1993 (now U.S. Patent No. 5,576,757), which is a continuation of U S . application Serial No.

07/878,603, filed May 5, I992 (abandoned), which is a continuation of U S , application Serial

No. 07/615,848, filed on November 20, 1990 (now the `459 patent). Kodak states that the `219
patent, on its face, indicates that it issued July 25,2000. Kodak denies that the '219 patent was

"duly and legally issued to St. Clair as assignee."

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PUBLIC VERSION
5.4

Kodak states that the `010 patent speaks for itself Kodak states that the `010

patent, on its face, indicates that it issued from U.S. application Serial No.09/253,831, filed February 19, 1999, which is a continuation of US.application Serial No. 08/712,433, fiIed September 1I, 1996 (pending), which is a continuation of US.application Serial No. 08/098,787, filed July 29, 1993 (now U.S. Patent No. 5,576,757), which is a continuation of U.S. application Serial No. 07/878,603, filed May 5, 1992 (abandoned), which is a continuation of

U.S.application Serial No. 07/61 5,848, filed on November 20, 1990 (now the `459 patent),
Kodak states that the `010 patent, on its face, indicates that it issued May 15,2001. Kodak
denies that the `010 patent was "duly and legally issued to St. Clair as assignee." 5.5 Kodak states that the `899 patent speaks for itself. Kodak states that the `899

patent, on its face, indicates that it issued from US.application Serial No.09/541,285, filed April 3,2000, which is a continuation of U.S. application Serial No. 08/651,562, filed May 22, 1996

(now the `219 patent), which is a continuation of U.S. application Serial No. 08/098,787, filed
July 29, 1993 (now U.S. Patent No. 5,576,757), which is a continuation of U.S. application Serial

No, 07/878,603, filed May 5, 1992 (abandoned), which is a continuation of US.application
Serial No. 07/615,848, filed on November 20, 1990 (now the `459 patent). Kodak states that the
`899 patent, on its face, indicates that it issued November 27,2001. Kodak denies that the `899

patent was "duly and legally issued to St. Clair as assignee."

5.6

Kodak states that the `222 patent speaks for itself. Kodak states that the `222

patent, on its face, indicates that it issued From U.S. application Serial No. 09/724,375, filed November 27,2000, which is a continuation of U.S. application Serial No.09/253,83 1, filed February 19, 1999 (now the `010 patent), which is a continuation of U.S.application Serial No, 08/712,493, filed Septenbex 11, 1996 (pending), which is a continuation of U.S. application 12

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PUBLIC VERSION
Serial No. 08/098,787, filed July 29, 1993 (now US. Patent No. 5,576,757), which is a continuation of U.S.application Serial No. 07/878,603, filed May 5, 1992 (abandoned), which is

a continuation of U.S. application Serial No. 07/615,848, filed on November 20, 1990 (now the
`459 patent). Kodak states that the `222 patent, on its face, indicates that it issued December 15,

2002. Kodak denies that the `222 patent was "duly and legaIly issued to St. Clair as assignee."
5.7

Kodak admits that copies of the Roberts Patents are attached to St. Clair's

Complaint as Exhibits 1-5. Kodak states that Appendices A-G speak for themselves. Kodak lacks knowledge or information sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 5.7.

5.8
5.9

Kodak denies the allegations of Paragraph 5.8. If the overly broad claim construction advocated by St. Clair is adopted, then the

asserted claims would not be valid over the prior art. Kodak states that St. Clair's proposed claim construction is incorrect and should not be adopted. (See Exs. 31-35 to St. Clair's
Complaint).
5.10

Kodak denies that the Roberts Patents are enforceable by St. Clair, because St.

Clair is not the owner of the Roberts Patents.
5.1 1

Kodak states Paragraph 5.11 constitutes an opinion and therefore requires no

response.
5.12

Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 5.12.

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PUBLIC VERSION
5.13 Kodak states that Exhibit 23 speaks for itself. Kodak admits that claims of the

`459, `219, `010 and `899 patents, before those patents were re-examined by the United States

. Patent and Trademark Office, were given a construction by the United States District Court for
the District of Delaware in St. Clair Intellectual Properp Consultants, Inc. v. Sony, Civil Action

No. 01-557 (JJF), in an order dated September 3,2002. Kodak denies that such claim
construction is correct or applicable in this case.
5. I4

Kodak states that Exhibit 24 speaks for itself. Kodak admits that claims of the

`459, `219, `010 and `899 patents, before those patents were re-examined by the United States

Patent and Trademark Office, were given a construction by the United States District Court for the District of Delaware in St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., Civil Action No. 03-241 (JJF), in an order dated August 31,2004. Kodak denies that such claim

construction is correct or applicable in this case.
5.15

Kodak states that Exhibits 25-28, 29, and 30 speak for themselves. Kodak states

that the PTO indicated that the claim construction offered by the United States District Court for
the District of Delaware in SI. Clair Intellectual Property Consultants, Inc. v. Sony Corp., Civil Action No. 01-557 (JJF) and SI. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., Civil Action No. 03-241 (JJF) was incorrect. Kodak lacks knowledge or information sufficient

to form a belief as to the truth of the remaining allegations contained in Paragraph 5. 15. 6, INF'RINGEMENT OF THE ROBERTS PATENTS
6.1

Kodak denies the allegations contained in the first two sentences of Paragraph 6.1.

Kodak admits that claim charts were attached as Exhibits 31-35, but denies the allegations

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PUBLIC VERSION
contained in those claim charts. Kodak lacks knowledge or information suf%cient to form a belief as to the truth of the al1egation.s contained in the last sentence of Paragraph 6. I.

7.

IMPORTATION BY KODAK
7.1

Kodak admits that it sells digital cameras in the United States, but denies that its

cameras infringe the Roberts Patents.
7.2

Kodak admits that it imports and sells digital cameras manufactured on behalf of

Kodak in Asia, but denies that such cameras inenge the Roberts Patents.
7.3

Kodak admits that the C643 camera is made in China, and states that the

packaging of the C643 camera speaks for itself.
7.4

Kodak admits that that P880 camera is made in Korea, and states that the

packaging of the P880 camera speaks for itself.
7.5

Kodak admits that the V705 camera is made in Korea, and states that the

packaging of the V705 camera speaks for itself.
7.6

Kodak admits that the 27 10 camera is made in China, and states that the

packaging of the 27 I O camera speaks for itself.
7.7

Kodak admits that the Easyshare One (6MP) camera is made in China, and states

that the packaging of the EasyShare One (6MP) camera speaks for itself.
7.8

Kodak states that Exhibit 36 speaks for itself.

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7.9

Kodak denies the allegations contained in the first two sentences of Paragraph 7.9.

Kodak states that Exhibit 37 speaks for itself.
7.10 Kodak admits that the accused products are classified under a U.S.Harmonized

Tariff Schedule Number under the 2006 Harmonized Tariff Schedule of the United States, and that its imports occur under subheading 8525.80.40. Kodak denies that its products infringe the Roberts Patents and denies that its importations are unlawful. 8. DOMESTIC INDUSTRY
8.1

Kodak denies the allegations contained in Paragraph 8.1

a, St. Clair's Domestic Activity

8.2

Kodak lacks bondedge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.2.
8.3

Kodak lacks knowledge or information sufficient to form a beIief as to the truth of

the allegations contained in Paragraph 8:3.
8.4

Kodak lacks knowledge or infonnation sufficient to form a belief as to the truth

of the allegations contained in Paragraph 8.4.

8.5

Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.5.
8.6

Kodak denies that St. Clair purchased the right, title or interest in or to the

Roberts Patents. Kodak lacks knowledge or information sufficient to form a belief as to the truth

of the remaining allegations contained in Paragraph 8.6.
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8.7

Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.7. 8.8 Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegatjons contained in Paragraph 8.8.
8.9
8.10

Kodak admits the allegations contained in Paragraph 8.9. Kodak states that Exhibit 39 speaks for itself. Kodak lacks knowledge or

information sufficient to form a belief as to the truth of the allegations contained in Paragraph

8,IO.
8.1 1 Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.1 1.
8.12

Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.12.
8.13 Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.13.
8.14

Kadak admits the allegations contained in Paragraph 8.14, Kodak lacks knowledge or information sufficient to form a belief as to the truth of

8.15

the allegations contained in Paragraph 8.15.
8.16

Kodak states that Exhibit 40 speaks for itself. Kodak lacks knowledge or

information sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 8.16,
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8.1 7 Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the remaining allegations contained in Paragraph 8,17. 8.18 Kodak states that Exhibit 41 speaks for itself, Kodak lacks knowledge or

information sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 8.18.
8.19

Kodak admits that St. Clair contacted Kodak about a potential license to the

Roberts Patents in 2004. Kodak lacks knowledge or information sufficient to form a belief as to

the truth of the remaining allegations contained in Paragraph 8,19.
8.20

Kodak denies that its digital cameras sold in the United States infringe the

Roberts Patents. Kodak lacks knowledge or information sufficient to form a belief as to the truth

of the remaining allegations contained in Paragraph 8.20.
8.21
8.22

Kodak admits the allegations contained in Paragraph 8.21. Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the ailegations contained in Paragraph 8.22.
8.23

Kodak lacks knowledge or information suffcient to form a belief as to the kuth of

the allegations contained in Paragraph 8.23.

8.24
8.25

Kodak admits the alIegations contained in Paragraph 8.24. Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.25.

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8.26 Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8:26. 8.27 8.28 Kodak admits the allegations contained in Paragraph 8.27. Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.28. 8.29 Kodak lacks knowledge or illformation sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.29.

b. St. Clair's Licensees' Domestic Activities
8.30 Kodak states that U.S.C.8 1337 speaks for itself Kodak lacks knowledge or

information sufficient to form a belief as to the truth of the remaining allegations contained in Paragraph 8.30. 8.31 Kodak lacks knowledge or information sufficient to form a belief as to the truth of

the allegations contained in Paragraph 8.31.
8.32

Upon information and belief, Kodak states that the documents contained in

Confidential Appendix N speak for themselves.

9.

RELATED LITIGATION
9. I

Kodak admits the allegations contained in Paragraph 9.1, Kodak admits the allegations contained in Paragraph 9.2.

9.2

9.3

Kodak admits the allegations contained in Paragraph 9.3.
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9.4 Kodak admits the allegations contained in the first sentence of Paragraph 9.4.

Kodak states that its initial Answer to St. Clair's Complaint, which was filed before Kodak purchased the Roberts Patents from Mirage, speaks for itself. Kodak admits that the Delaware infringement litigation has been stayed, and states that it has not addressed validity or ownership

in that case because proceedings have been stayed. Kodak denies that it has not made any
allegation that St. Clair is not the true owner of all right, title, and interest in and to the `459,

`219, `010, and `899 patents. Kodak denies the remaining allegations contained in Paragraph
9.4.
9.5

Kodak admits that, on April 12,2005, Mirage filed suit against St. Clair and the

Inventors in the Superior Court of California, County of Santa Clara, claiming that Mirage owns the Roberts Patents and seeking, among other things, a declaration of title to the Roberts Patents, allegations contained in the first sentence of Paragraph 9.5. Kodak admits that it acquired

Mirage's rights to the Roberts Patents through an agreement signed May 20,2005, but denies St.
Clair's characterization of that agreement. Kodak admits that Kodak was substituted as Plaintiff in the California ownership action on May 24,2006. Kodak admits that St. Clair has filed a cross-complaint, thereby invoking the jurisdiction of the California state court. Kodak denies the remaining allegations contained in Paragraph 9.5.
9.6

Kodak admits that St. Clair filed suit against Mirage and against Mr. Moussally

and Mr. Ford on May 6,2005 in the District of DeIaware. Kodak admits the allegations
contained in the second, third, and fourth sentences of Paragraph 9.6. Kodak denies that Kodak or Mirage committed any tort, and denies that St. Clair is entitled to any tort damages. Kodak denies that St. Clair's "ownership" rights were undermined, and states that St. Clair has no such ownership rights. Kodak denies that St. Clair's ability to Iicense the Roberts Patents was

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interfered with, and denies that St. Clair has any legitimate ability or right to license the Roberts Patents.
9.7

Kodak admits the allegations contained in Paragraph 9.7. Kodak admits the allegations contained in Paragraph 9.8, Kodak lacks knowledge or information sufficient to form a belief as to the truth of

9.8
9.9

the allegations contained in Paragraph 9.9,

IO.

REQUEST FOR RELIEF
10. Kodak denies that St. Clair is entitled to the requested relief.
First Affirmative Defense

Kodak is the rightfid owner of the Roberts Patents such that St. Clair has no standing to assert the Roberts Patents. Jerry Speasl, Marc Roberts, and Matthew Chikosky, the named inventors of the Roberts Patents (the "inyentors"), conceived of the invention(s) described in the Roberts Patents while they were employees of Mirage Systems, Inc. ("Mirage") and in connection with their work at Mirage. Kodak is Mirage's successor-in-interest, and, in California State Court, is seeking a declaration that it is the legal owner ofthe Roberts Patents. Prior to their employment with Mirage, the inventors had each signed employment agreements in which they: (1) assigned to Mirage all inventions conceived during their employment that related to Mirage`s businessiresearch and deveiopment, or arose out of work performed for Mirage (meaning any covered inventions would immediately vest in Mirage upon conception of the invention); and (2) agreed to promptly disclose to Mirage all inventions

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conceived during their employment so that Mirage could determine whether such inventions related to its business. In 1989, while working on a project involving unmanned aeriaI vehicles, the inventors conceived of and developed an idea for a digital camera that could save images in multiple formats, thereby allowing the images to be easily transferred to computers for analysis. In addition to the use of the invention with a UAV, the inventors explored a concept for the U.S.
Army in which the invention would be used to take and send images remotely, general

applications for security organizations, and applications for intelligence operations. The inventors have also admitted that the invention would assist them in their work for Mirage by allowing them to efficiently incorporate digital images into presentations to Mirage customers. Instead of promptly disclosing the invention to Mirage, as required by their employment agreements, the inventors concealed the invention and sought to retain the benefits for themselves. The inventors secretly formed their own company, Personal Computer Cameras, Inc. ("PCC"), filed a patent app1ication;and then purported to assign the rights to the expected patents to PCC. St, Clair helped the inventors develop and market the Roberts Patents while they were still employees of Mirage, and, in 1995, purported to purchase the Roberts Patents from

PCC. Given the circumstances of the invention's conception and reduction to practice, however,
the alleged assignments to PCC and St. Clair were a nullity. The invention related to Mirage's business, it was covered by the inventors' employment agreements, and any rights to it vested immediately in Mirage upon conception. The inventors never possessed any ownership interest

in the invention and therefore had nothing to convey to PCC or to St. Clair.

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Mirage learned of the invention described in the Roberts Patents in 2003 when Canon

served it with a subpoena in connection with a patent infiingement action brought by St. Clair.

Prior to this subpoena, Mirage was unaware that the Individual Defendants had developed the
digital camera idea as employees of Mirage, used Mirage resources to do so, secretly formed a separate company to profit from the invention, and concealed business opportunities relating to

the invention. After learning of the existence of the Roberts Patents, Mirage investigated the

facts regarding the invention, uncovered the circumstances surrounding its conception and
development, and initiated the California ownership litigation. In June 200.5, Kodak purchased Mirage's rights to the Roberts Patents, and Kodak now owns the very patents it is accused of

infringing in this Investigation.
Second Affirmative Defense

Respondent's investigation of the Roberts patents is ongoing. Respondent reserves the

right to amend and/or supplement this Response to add new prior art or additional arguments in
light of its continuing investigation and if and when discovery progresses.
In Exhibits 3 1-3.5 to the Complaint, St. Clair provides preIiminary infiingement claim

charts that appear to construe material claim terms - particularly "file format" and its variants broadly in a manner which may be an attempt to follow claim constructions from earlier District Court litigations against other parties, but which ignores the superceding constructions provided

by the U S . Patent and Trademark Office Examiner in the reexamination file histories for each of
the `459, `219, `010, and `899 patents. St. Clair's claim construction (thec% Clair Construction") is incorrect based not onIy on what the Roberts Patents describe as the invention,

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but also because giving the claims such a broad construction would render the patents invalid under 35 U.S.C.

$5

102 and 103.

During the reexaminations of each of the `459, `219, `010, and `899 patents, the Examiner explicitly noted that "a very different interpretation than that adopted by the court must

be made" with respect to the definition for the common claim limitation "formatting the digital image signal in one of a plurality of computer image file formats." (SeeIn re Rexamination o f

US, Patent No.6,323,899, Control No. 90/0061438, 6/20/05, Office Action, Paper No. [not
provided by PTO], p. 2, V I ) Whereas Judge Farnan had construed this term without reference to

the hardware associated with the saved image data, the Examiner defined it to mean "formatting the image signal as one of an IBM PCIClone, Apple Mactintosh, or other PC format." It was

onfy under this alternate construction that the Examiner during the reexamination process
confirmed the patentability the claims over the prior art of record. The Examiner did not determine whether the claims would be valid under the construction that he found to be in error. Despite the clear and explicit construction provided by the Examiner for the limitation "formatting the digital image signal in one of a plurality of computer image file formats" (and similar terms in the other asserted claims), St. CIair has asserted that the accused cameras infringe this limitation not based on any hardware associated with image data saved, but because they allegedly "format a digital image signal in either a JPEG or QuickTime image file format."
(See Ex. 3 1 at p. 2). However, this construction, which ignores the computer hardware

associated with the stored image data, and also ignores the fact that there is no selection of a data format for any given still image recorded, must be in error because a review of the prior art demonstrates that several other individuals and entities, when confronted with problems relating

to digital imaging technology, conceived, reduced to practice, sold, offered for sale, and
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described in printed publications the alleged broad "invention" that would be covered under the
St. Clair Construction, Following are examples of prior art that would anticipate and/or make
. obvious the

asserted claims if they were to be given St. Clair's proposed construction,
WO 90/0917 to Kuhberger ("Kuhberger")

A.

The Kuhberger PCT application`claims February 20, 1989 as a priority date and was published August 28, 1990. Kuhberger discloses an electronic camera having an optical lens and shutter, a digital image pick-up unit and a storage device, and a microcomputer for controlling

the camera containing processing and control programs. Kuhberger describes a process for
generating an analog image signal corr&ponding to an image incident on the pick-up unit (e.g., a
CCD), digitizing the signal from the CCD or other pick-up unit, storing digital image data in

buffer memory, putting the digital data in a data format that can be read directly by a standard computer (e.g., GEM, Paintbrush, PCX, TIF, etc.), and saving the resultant data on a removable, computer-readable disk. St. Clair submitted Declarations and other exhibits in the reexamination file histories for the `899 and `010 patents in an attempt to demonstrate an earlier conception date for those patents than August 28, 1990. However, the allegedly contemporaneous documents submitted in those file histories do not evidence any conception that would be supported by the St. Clair Construction. As such, at least under the St. Clair Construction, Kuhberger is prior art to the

Roberts patents at least under 37 U.S.C. $102(a).
B.

The Kodak Hawkeye 11 Camera

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The Hawkeye I1 was an electronic camera developed by Kodak having an optical lens
.

and shutter, a digital image pick-up unit in the form of a CCD, and analog-to-digital converter,
buffer memory for short-term storage of digitaI image data, long-term storage, and a microcomputer for controlhg the camera containing processing and control programs. Kodak developed two versions of the Hawkeye IK camera in the late 1980's and continuing into 1990.

The first Hawkeye I1 was an integrated digital electronic camera with a removable memory card
that could and did store image data as TIFF images. The second Hawkeye II was a digitaI electronic camera in two parts with an imaging unit tethered to a shoulder pack, in which digital images could be and were stored as TIFF images or as NITF images in a hard drive of the shoulder pack. Both the conception and reduction to practice of both versions of the Hawkeye I1

took place before November 20, 1990, and offers for sale of the Hawkeye 11 were made as well,
Thus, both Hawkeye 11s qualify as prior art under at least 37 U.S.C. 102(a), (b) and (g). 0
C. The Kodak E-CAM Camera

The ECAM camera (also called D-SOOO) an integrated electronic camera developed was

by Kodak having an optical lens and shutter, a digital image pick-up unit in the form of a CCD,

an analog-to-digital converter, buffer memory for short-term storage of digital image data, longterm storage, and a microcomputer for controlling the camera containing processing and control
programs. The ECAM could store digital images in a compressed or uncompressed format, depending on a setting of a switch on the camera. If stored in compressed format, the image data

will be stored in a file with a different arrangement of data than if uncompressed - the file will
contain such additional information as a quantization information table for decoding the compressed image data. Both the conception and reduction to practice of the ECAM took place

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prior to November 1990. Thus, the ECAM qualifies as prior art under at least 37 U.S.C. I02 8
(g).

D .

U S . Patent No, 4,546,390 to Konishi ("Konishi")

U.S.Patent No. 4,546,390 ("the Konishi patent") issued on October 8, 1985 and therefore
qualifies as prior art to the Roberts patents at least under 35 U.S.C. I02(b). The Konishi 8 patent discloses a self-contained portable electronic combination still/movie camera that utilizes a simple audio-grade recording device to store both still and movie pictures. The Konishi patent discloses a mode change-over switch and control unit for selecting either a still picture format or a movie .format. The Konishi patent also includes a mode decision circuit in the control unit, which is responsive to the mode change-over switch, that converts the output data to the user selected format.

E.

U.S. Patent Nos. 5,034,804 and Sy0l8,017 Sasaki ("Sasaki `804" and to "Sasaki 6017")

U.S. Patent Nos. 5,034,804 and 5,018,017 (the "Sasaki `804 patent" and "Sasaki `017

patent") were filed on December 23, 1988 and Deceiiiber 8, 1989, respectively, and issued on
July 23, 1991 and May 21, 1991, respectively. These patents qualify as prior art to the Roberts

patents at Ieast under 35 U.S.C. 0 lOZ(e). The application that led to the Sasaki `017 patent is a continuation-in-part ("CIP") of the application that led to the Sasaki `804 patent. Thus, much of

the disclosure of the Sasaki `017 is the same as the disclosure in the Sasaki `804 patent,
The Sasaki `804 patent and Sasaki `017 patent disclose a self-contained portable electronic still camera, h e components of which - including a CCD array, analog-to-digital converter and a data compression unit -- are contained in a single housing, which stored digital data, which could be image data, voice data or other types of data, in files stored on a removable

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memory card. The Sasaki `804 and `017 patents teach that the user of the disclosed camera
could select one of a plurality of recording modes (A)-(D) for recording the digital image data in

files on a removable memory card. In mode (A), full-resolution data is stored in a file on the
memory card. In mode (B), subsampled data is stored in a file on the memory card. In modes
(C) and (D), compressed, subsampled data is stored in a file on the removable memory card with
one of two different levels of compression. The data could be compressed using a variety of compression algorithms, including DPCM (differential pulse code modulation), which quantified the difference between an image's actual value at each pixel and its predicted value based on one or more previous pixels. These differences are then stored in smaller amounts of memory than would be required to store the original image. In this type of compression, the algorithm is applied to the image data, changing the arrangement of image data in the compressed file as

compared to the arrangement of data in the uncompressed file.

F.

U.S. Patent No. 5,164,831 to Kuchta ((`Kuchta patent")

U.S.Patent No. 5,164,831 ("the Kuchta patent"), which was filed on March 15, 1990 and
issued November 17, 1992, qualifies as prior art to the Roberts patents at least under 35 U.S.C. 6 102(e). The Kuchta patent, which is assigned to Kodak, describes an electronic still camera that provides multi-format storage of full and reduced resolution images that are stored in digital files

on a removable memory card. The Kuchta patent teaches that the camera produces a file that
contains image data in two image file formats (thumbnail format and full resolution format),

With the full resolution file format, the image is compressed by a series of steps, including DCT
(discrete cosine transform), block-to-serial conversion, thresholding, normaIization, quantization, and minimum redundancy encoding, as described in the patent. In the thumbnail image file

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format, two different possible averaging algorithms may be used -- one that uses the averaged or DC values from the DCT algorithm or one that simply averages values over blocks of pixels.

F .

Thennovision, Tessera ZK, Dycam and EDC 1000 Cameras
1. Agema Thcrmovision 470 camera

'

The Agema Thermovision 470 camera is a self-contained, portable, thermal-imaging digital camera. It was developed in the mid 1980s and offered for sale in 1989, The Agema Thermovision 470 integrated all of the essential features of a digital camera into a portable selfcontained system. The image sensor was sensitive in the thermal infi-wed spectrum. Digital images were captured and temporarily stored in camera memory before being formatted and stored on a floppy disk drive in the camera by the camera's microprocessor. The digital image data could be arranged and stored in two different formats (MAG format and non-MAG format). The floppy disk could be removed from the camera, inserted into the floppy disk drive in a

personal computer, and directly read and stored by any IBM PC. The Agema Thermovision 470
qualifies as prior art under at least under 35 U.S.C. 102(a), (b), and (g). $5
2. Megavision Tessera 2K camera

The Megavision Tessera 2K camera was a digital camera primarily for use by the professional commercial photographer. The camera contained a camera head, which contained a

lens, shutter, color wheel, and Iight sensor. The camera also contained a processor and a

.

controller, to which images were sent from the camera head via a cable, The processor digitized the images and stored them in a buffer. The controller provided long-term image storage facilities such as magnetic and optical disks, floppy disks, and tape drives. A user could select

one of several image file formats such as Elph, Targa 16, Targa 32, CT2T/T2CT, Hell, Crosfield,
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and TIFF. The Megavision Tessera 2K camera qualifies as pnor art at least under 35 U.S.C, $9
102(a), 0 , 1 (SI.
3.

Dycam Model 1 Digital Still Camera

The Dycam Mode1 1 was a self-contained, portable, digital still camera that was first

demonstrated in June 1990. The camera included a battery, a shutter button, a lens, a flash, a viewfinder, a CCD, an analog to digital converter, a microprocessor, and internal memory. The Dycam Model 1 stored digital image data in an internal solid state (semiconductor) memory. Each photo was stored in memory in an uncompressed RAW image file format. The digital image data was transferred from the internal memory to an IBM PC or Macintosh computer via a cable. The Dycam Model 1 transferred digitaI image data to a computer as raw data, and the user could selectively convert the RAW format into either the TIFF or PICT format using the computer. The Dycam Model 1 qualifies as pnor art under at least 35 U.S.C. 102(a), (b), and $4

(!a
4.

Electrim EDC-1000 Digital Camera

The Electrim EDC-I 000 was a digital camera that was first publicly demonstrated and

sold in the spring of 1989. The EDC-1000 contained a camera head, a lens, a connecting cable
for use with a computer, and an interface card. The EDC-IO00 used a personal computer (e.g.,

IBM PC or compatible) as the microprocessor. Commands for the device were issued by using
the connected computer. The camera used a CCD to capture an image and it output an 8-bit digital signal corresponding to the captured brightness levels. The camera utilized the floppy drive of the PC as the storage device. The EDC-I000 could save digitai image data in multiple

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formats, including TIFF, PCX, and BUF (Electrim's proprietary EUW format). The EDC-1000 qualifies as prior art under at least 35 U.S.C.

$8 102(a), (b), and (g).

G.

Section 103 Considerations

While discovery is just commencing as to critical issues related to the analysis under the St. Clair Construction, Kodak contends the following with respect to 8 103 considerations:
1.

Scope and Content of the Prior Art

Several key pieces of prior art to'the Roberts patents under the St. Clair Construction have been outlined above. From a review of this and other prior art, it is clear that although many elements of the asserted claims of the Roberts patents are directed towards various features
of electronic still cameras, the named inventors on those patents did not invent electronic still

cameras. Indeed, Kodak built the world's first digital camera in 1975, Nor did the named inventors invent the use of CCD's in electronic cameras, or analog-to-digital converters, or buffering and long-term storage of digital image data, or generating files in electronic still cameras that are computer-readable, or formatting computer disks andlor memory cards, All of these features were common and well known in the prior art. By 1980, there were already products on the market that could perform any or all of these functions. The limiting factors related to the costs and technological constraints associated with random access and long term

memory were less limiting as the 1980's progressed, and by the late 1980's it had become more
feasible to include more components within a single housing.
2.

The Difference Between the Claimed Invention and the Prior Art

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Under the St. Clair Construction'for the claims, there is no difference between the claimed invention and the prior art - there are simply no claim limitations that cannot be found in the prior art. Nor has St. Clair identified how, under the St. Clair Construction, any particular combination of well-known features could be considered unforeseeable or unique.
3.

Objective Evidence of Non-Obviousness

While discovery has not commenced on this issue, it is clear that there is little evidence

of non-obviousness under the St. Clair Construction of the asserted claims.
4.

ExplicitAmplicit Motivations to Combihe

Several of the pieces of prior art described herein were developed by Kodak or Kodak's competitors. There is an explicit motivation to combine different aspects of different products from the same manufacturer. There is also an explicit motivation to combine different but complementary products from different manufacturers, which products also constitute art that
'

persons of ordinary skill would find of special importance when designing an electronic still camera. There is also a motivation to combine references based on the nature of the problem to be solved under the St. Clair Construction, If the St. Clair Construction of the asserted claims of the

Roberts patents is given effect, then the nature of the problem to be solved would appear to be

how to take digital image data in an electronic camera and store it on long-term memory such
that it can be later accessed. In other words, if the claim limitation "formatting the data signal in

one of a plurality of computer formats" merely means arranging the digital image data into one
of a plurality of image formats, including JPEG, GIF, TIFF, PICT, BMP, JFIF, etc., then the

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nature of the problem that is being solved would be generally the problem of how to store data in long-term memory for later access. Persons of ordinary skill in the at confronted with a r problem of this nature would thus look to see how digital data is stored in electronic cameras already built or described in patents or other publications, as well as how digital data is stored in other devices including scanners and computers. The elements described in the Roberts patents for manipulating and storing the digital image data - including analog-to-digital converters, buffers, long-term memory, and microprocessors - are just as ubiquitous in these other fields as

they are in the field of electronic still cameras.
If the St. Clair Construction is given effect, then the "invention" of the Roberts patent would thus be characterized as requiring the data to be saved in a computer format that accepts digital data. However, it is beyond reasonable dispute that electronic cameras, as well as computers, scanners and other devices, formatted and stored digital image data in digital files

long before November 1990. Thus, under the St. Clair Construction, the nature of the problem to
be solved had already been solved long before the Roberts patents were applied for.

H, Section 112 Considerations
If the patents were given St. Clair's proposed construction, the patents would also be

9 invalid under 35 U.S.C. I I2 71. The patents`specifications disclose an invention that allows a
user to store images in formats for at least two different hardware systems (e& IBM PC, Macintosh, etc.). The specifications do not disclose an invention that allows a user to choose between any two or more formats regardless of hardware platform. If the patents are construed

a broadly to encompass any two such formats ( s St. Clair proposes), the patents' disclosure would

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not support the claims, and the claims would be invalid for failing to meet the written description
requirement of 3 112 fil.

Third Affirmative Defense

The asserted claims of the Roberts Patents are not infringed by the accused Kodak cameras
directly andor by inducemen[:

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US, Patent No. 5,138,459

Roberts, et al. August 1 1,1992

Electronic still video camera with direct personal computer (PC) compatible digital format output
16. A process for storing an electronically sensed video image comprising the steps of: [a] generating an analog image signal corresponding to the imagewise pattern of radiant light incident on a plurality of light sensing pixel elements, [b] converting the analog image signals into digital electronic information signals wherein a distinct digital electronic signal corresponds to the analog image signals corresponding to the intensity of radiant Iight falling on the light sensing pixel elements, IC] temporarily storing the digital electronic information signals, [d] recording in selectable addressible memory means at least one of a phrality of different digital output data format codes where each of said pIurality of output data format codes corresponds respectively to one of a like plurality of different data formats for different types of computer apparatus,

[REDACTED]

[e] selecting from said selectable addressible memory means one of said different digital output data format codes to be associated with each said digital electronic information signals, and [fl storing said digital electronic information signals in a digital memory in accordance with said selected output data format code.

[RIEDACTED]

[REDACTED]

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U S , Patent No. 6,094,219

Roberts, et al. July 25,2000

Electronic still video camera wit,& direct personal computer (PC) compatible digiti- format output

1. In an electronic camera including means for digitizing captured image data and a memory element for storing digitized image data, the improvement comprising: [a] output data control means for selecting for each digitized captured image to be stored in the memory element one of a plurality o f different output data format codes stored in the camera and assigning the selected format code to the digitized captured image, each output data format code corresponding to at least one of a plurality of different data formats for different types of information handling systems, and

[REDACTED]

[b] logic means responsive to said output data control means for determining an output data format or each digitized captured image in accordance with the assigned output data format code.

[REDACTED]
Because Kodak's accused cameras do not infringe independent claim I ,they do not infringe dependent claim 2

2. The improved arrangement of claim I fkrther comprising pichre image resolution determining means for selectively determining which of a plurality of compression algorithm parameters are to be applied to said digitized captured image. 3. The improved arrangement o f claim 2 wherein said memory element comprises a removably mounted digital disk. 8. The improved arrangement of

Because Kodak's accused cameras do not infringe dependent claim 2, they do not infringe dependent claim 3 Because Kodak's accused cameras do not

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claim 1 further comprising audio recording means for simultaneously storing digital audio signals associated with each subject image and memory file correlation means for associating in said memory element the respective storage locations of said audio signals with its associated image signals. 10. An electronic camera comprising: [a] means for capturing image data corresponding to a selected image; [b] means for digitizing caDtured image data: [c] removably mounted memory means for storing digitized image data; [d] output data format control means for storing in said camera at least one of a plurality of different output data format codes where each of said plurality of output data format codes corresponds respectively to at least one of a plurality of different data file formats for different types of computer apparatus; and [e] logic means responsive to said format control means for selectively controlling the formatting of said digitized captured image data in accordance with a selected one of said plurality of different output data format codes. infringe independent claim I, they do not infringe dependent claim 8.

[REDACTED]

[REDACTED]

[REDACTED]

12. The device of claim 10 further Because Kodak's accused cameras do not comprising image resolution determining infringe independent claim 10, they do not means for selectively determining which of infringe dependent claim 12 a plurality of compression algorithm parameters are to be applied to said digitized image data. 16. An improved eIectronic camera comprising: [a] an optical lens; [b] shutter means operably ' associated with said lens; [c] an array of discrete light sensing pixel eIements, each pixel being responsive to incident illumination from a subject image radiating through said lens

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and shutter means to generate an analog picture information signal corresponding to said subject image; [d] analog to digital converter means for converting said analog picture information signal into corresponding digital data information signals; [e] memory means for storing said digital data information signals;

[REDACTED]

[fl output data control means for selecting for each digital data information signal one of a plurality of different output data format codes prerecorded in said camera and assigning the selected output data format code to the digital data information signal, each output data format code corresponding respectively to at least one of a plurality of different data formats for different types of information handling apparatus; and
[g] logic means responsive to said output data control means for . determining the output data format file structure of said digital data information signals in accordance with said assigned outDut data format code. 17. The improved electronic camera of claim 16, hrther comprising picture image resolution determining means for selectively determining which of a plurality of compression algorithm parameters are to be applied to said digital data information signals. 18. The improved electronic camera of claim 16, wherein said memory means comprises digital data means having a plurality of addressable sections for stonng said digital data infomation signals.

[REDACTED]

[REDACTED]
Because Kodak's accused cameras do not infringe independent claim 16, they do not infringe dependent claim 17

Because Kodak's accused cameras do not infringe independent cIaim 16, they do not infringe dependent claim I8

38

Case 1:04-cv-01436-JJF

Document 124-4

Filed 03/30/2007

Page 40 of 47

PUBLIC VERSION

U.S. Patent 6,233,010

Roberts, et al. May 15,2001

Electronic still video camera with direct personal computer (PC) compatible digital format output
1. A digital camera for taking pictures and storing them in a removable storage device in the camera, said digital camera apparatus comprising: an image pick-up unit for [a] generating and outputting a digital image signal photoeIecfxicaily converted fiom an image incident thereon, and a digital contro1 unit for [b] formatting said digital image signal in one of a plurality of computer formats.

[REDACTED]

[REDACTED]

39

Case 1:04-cv-01436-JJF

Document 124-4

Filed 03/30/2007

Page 41 of 47

PUBLIC VERSION

US.Patent 6,323,899

Roberts, et al. November 27,2001

Process for use in electronic camera
1. For use in rn electronic camera having an image pick-up unit and a storage device, a process for taking and storing digital pictures, the process comprising: [a] generating a digital image signal corresponding to an image incident on the image pick-up unit; b] formatting the digital image signal in one of a plurality of computer image file formats; and [c] storing the formatted imago file in the storage device. 2. A process as in claim 1, wherein the storage device is removable.

.

[REDACTED]

.

Because Kodak's accused cameras do not infiinge independent claim I , they do not infiinge dependent claim 2

3. For use in an electronic camera having an image pick-up unit and a storage device, a process for taking and storing digital pictures, the process comprising: seIecting one of a plurality [a] of computer image file for