Free Declaration - District Court of Delaware - Delaware

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UNITED STATES INTERNATIONALTRADE COMMISSION WASHINGTON, D.C. 20436

In the Matter of

Investigation NO.337-TA-

CERTAIN DIGITAL CAMERAS AND COMPONENT PARTS THEREOF
. . ,) .

CQMI'LAUNT UNDER SECTION 337 OF TfiE TARIFF ACT OF 1930, AS AMENDED
.

Complainant: St. Clair Intellectual Property Consultants, Inc. 16845 Kercheval Avenue, Suite No. 2 Grosse Pointe, Michigan 48230 (313) 884-8427 Counsel for Complainant: Ronald J. Schutz Becky R. Thorson Carrie M.Lambert Bruce D. Manning David B. Zucco ROBINS, W L A N , MILLER & CIRESI L.L.P. 800 LaSalle Avenue, Suite 2800 Minneapolis, MN 55402 Telephone: (612) 349-8500

Proposed Respondent: Eastman KO& Company 343 State Street Rochester, New York 14650

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TABLE OF CONTENTS

1.
2.
3.
4.

. .............,................................ ......................,..1 COMPLAINANT ST. CLAIR................................................................................................ 2 PROPOSED RESPONDENT KODAK............... ............,........... ..... ..................................... 3 BACKGROUND OF THE ROBERTS PATENTS......... ................................................. ..... . 3
LNTRODUCTION ...................... .......... ...,...
, ,

.

.

a.
b.

Nontechnical Description of the Roberts patents.................................................... PCC's and St. Clair's History with the Roberts Patents ......................................... i.
1. 1

3

5
5

St. Clair Assists PCC in Finding Business Opportunities ...........

..

PCC Discusses a Business Relationship with Kodak .............................5 St. Clair Purchases All Right, Title, and Interest in and to the Roberts Patents...........,........................................................................................ 7

5.

. THE ROBERTS PATENTS ................,.................. ................ ........................................... 10 . .
INFRINGEMENT OF THE ROBERTS PATENTS ....,....................................................... 13

iii.

6.

7.
8.

...................... ......................... ........ 14 ... .. DOMESTIC INDUSTRY...............,.... .,.........................,...............,............,...................... 15 St. Clair's Domestic Activity........................................................ . ...............,....... 15 a .
WORTATION BY KODAK ................................... b. St. Clair's Licensees' Domestic Activities ...........................................................
,

.

20
,

.
. ,

9. 10.

RELATED LITIGATION ............ ... ... . ,......

. . . . .....,.............. ......:.......... .....,................. .....:2 1 REQUEST FOR RELIEF .......,....................................................,,.................................24 . ,
*.

1 1

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LIST OF EXHIBITS AND APPENDICES Exhibits

Description
U.S. Patent No. 5,138,459

US.Patent No. 6,094,219
US, Patent No. 6,233,010
U.S. Patent No. 6,323,899

U.S. Patent No. 6,496,222
The recorded assignment of U.S. Patent Application Serial No. 37/615,848, which matured into U.S. Patent No, 5,138,459, fkom the inventors, Marc K. Roberts, Matthew A. Chikosky, and Jerry A. Speasl, to Personal Computer Cameras, Inc., dated January 9, 1992
The Patent Purchase Agreement between St. Clair Intellectual Property Consultants, Inc. and Personal Computer Cameras, Iac. dated November 21, 1995

The recorded assignment ofU.S. Patent No. 5,138,459 and related patent applications fiom Personal Computer Cameras, Inc. to St. Clair Intellectual Property Consultants, Inc. dated January 16,1996 Article entitled "California Company Develops Floppy-Disk Color Digital Camera" in Photo Marketing, dated February 10, 1993 Article entitled "Personal Computer Cameras, Inc." from Dataquest, dated February 17,1993
'

Article entitled "Focusing on the Future" from the Tri-ValZeyHerald by David Berkowitz, dated June 14,1993 Article entitled `'Digital Camera Eliminates Film" in the YuZZey Times by Lesley Guth, dated June 28,1993 Facsimile and attachment from David Lewis to Marc Roberts dated January 15, 1992 Written agenda for Personal Computer Cameras, Inc.'s February 5,1992 meeting at Eastman Kodak Company
111

...

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16

Letter fiom Marc Roberts to David Lewis dated February 13,1992 Letter from David Lewis to Marc Roberts dated March 18,1992 Handwritten notes regarding a telephone conversation between Jerry Speasl and David Lewis on June 29,1992 Letter fiom Jerry Speasl to David Lewis dated August 17,1992 Letter from David Lewis to Jerry Speasl dated September 11,1992 Letter fiom David Woods to Jerry Speasl dated October 7,1992 Personal Computers Cameras, Inc. press release entitled "Personal Computer Cameras, Inc. announces digital camera product," dated February 2, 1993, routed at Kodak by Anthony Kelly on February 10,1993 A facsimile with attachments fiom Marc Roberts to Anthony Kelly dated February 17, 1993 Memorandum Opinion and Order fiom St, Clair v. Sony Corp., Civil Action No, 01-557-JJF (D. Del.), dated September 3,2002 Memorandum Opinion and Order fkom St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., Civil Action No, 03-241-JJF @. Del.), dated August 3 1,2004 Notice of Intent to Issue Ex Parte Reexamination Certificate from In re Reexamination of US. Patent No. 5,I38,459, Control No. 90/006,435, dated August 10,2005 Notice of Intent to Issue Ex Parte Reexamination Certificate from In re Reexamination of US. Patent No. 6,094,219, Control No. 90/006,436, dated August 10,2005 . Notice of Intent to Issue Ex Parte Reexamination Certificate from In re Reexamination of US, Patent No. 6,233,010, Control No. 90/006,437, dated April 3,2006 Notice of htent to Issue Ex Parte Rcexmhation Certificate frcm Liz re Reexamination of US. Patent No.` 6,323,899, Control No. 90/006,438, dated April 3,2006 Ex Parte Reexamination Certificate for U.S. Patent No. 6,323,899 dated November 28,2006

17 18 19

P 21 22
.

23 24

25

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Ex Parte Reexamination Certificate for U.S. Patent No. 6,094,219 dated December 19,2006 Claim charts demonstratimg Eastman Kodak Company's infringement of U.S. Patent Nos. 5,138,459,6,092,219,6,233,010,6,323,899, and 6,496,222 Eastman Kodak Company press release entitled "Kodak Announces Agreement with Flextronics for D s g ,Production and Distribution of its Consumer Digital ein Cameras" dated August 1,2006 Article entitled "JSodak Passes Sony i Digital Camera Sales" in The New Fork n Times dated February 3,2005

36

37
38

CONFIDENTIAL,:Declaration regarding domestic industry
Special Verdict Form from St. Clair v. Sony Corp., Civil Action No. 01-557-JE (D. Del.), dated February 25,2003

rm Special Verdict Form f o St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc., Civil ActionNo. 03-241-JJF (D. Del.), dated October 8,2004
Special Verdict Form f2om St. Clair Intellectual Properv Consultants, Inc. v. Canon, Inc., Civil Action No. 03-241-JJF @. Del.) dated October 25,2004

rm ...s Page f o Nikon U S A ' website entitled ``"ikon, Inc. Factory Service Facilities"

Description
Certified copies of US.Patent Nos. 5,138,459,6,092,219,6,233,010,6,323,899, and 6,496,222 (see Rule 210.12(a)(9)(i)) Certified copies of the recorded assignment of U.S. Patent Application Serial No. 37/615,848, which matured into U.S. Patent No. 5,138,459, &om the inventors, Mark K. Roberts, Matthew A. Chikosky, and Jerry A. Speasl, to Personal Computer Cameras, Inc., dated January 9,1992 and the recorded assignment of US.Patent No. 5,138,459 and related patent applications from Personal Computer Cameras, Inc. to St. Clair Intellectual Property Consultants, Inc., dated January 16, 1996 (see Rule 210,12(a)(9)(ii)) One (1) certified copy and three (3) duplicate copies of the prosecution history for U.S. Patent No. 5,138,459 (see Rule 210.12(~)(2))

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One (1) certified copy and three (3) duplicate copies of the prosecution history for U.S. Patent No. 6,092,219 (see Rule 210.12(~)(2)) One (1) certified copy and three (3) duplicate copies of the prosecution history f0rU.S. Patent No. 6,233,010 (see Rule 210.12(~)(2)) One (1) certified copy and three (3) duplicate copies of the prosecution history for U.S. Patent No. 6,323,899 (see Rule 210.12(~)(2)) One (1) certified copy and three (3) duplicate copies of the prosecution history for U.S. Patent No. 6,496,222 (see Rule 210.12(~)(2)) Physical Exhibits: one (1) certified CD-ROM and three (3) duplicate CD-ROMs containing the prosecution history for In re Reexamination o US. f Patent No, 5,138,459, Control No: 90/006,435 (see Rule 210.12(~)(2)) Physical Exhibits: one (1) certified CD-ROM and three (3) duplicate CD-ROMs Patent No. containing the prosecution history for In re Reexamination of US. 6,094,219, Control No. 90/006,436 (see Rule 210.12(~)(2)) Physical Exhibits: one (1) certified CD-ROM and three (3) duplicate CD-ROMs containing the prosecution history for In re Reexamination of US. Patent No. 6,233,010, Control No. 90/006,437 (see Rule 210.12(~)(2)) Physical Exhibits: one (1) certified CD-ROM and three (3) duplicate CD-ROMs containingthe prosecution history for In re Reexamination of U.S.'PatentNo. 6,323,899, Control No. 90/006,438 (see Rule 210.12(~)(2))

Four (4) copies of each material technical reference mentioned in the prosecution histories and/or reexamination proceedings for U.S. Patent Nos. 5,138,459, 6,092,219,6,233,010,6,323,899, and 6,496,222 (see Rule 210.12(~)(3))
Physical Exhibits: Eastman Kodak Company's C643, P880, V705,2710, and Easyshare One model digital cameras (see Rule 210.12@))

CONFIDENTIAL: Three (3) copies of each of St. Clair Intellectual Property :. Consultants, Inc.'s agreements related to U.S. Patent Nos. 5,138,459,6,092,219, 6,233,010,6,323,899, and 6,496,222 with digital camera manufacturers (see Rule 210.12(c)(l))

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3

P

1

1.

INTRODUCTION
1.1 Complainant St. Clair Intellectual Property Consultants, Inc. ("St. Clair") files this

Complaint and hereby requests that the United States International Trade Commission institute

an investigation into violations of Section 337 of the Tariff Act, as amended, 19 U.S.C. § 1337.

I

1.2

St. Clair brings this action to remedy violations of Section 337 arising &om the

I
1

unlawful and unauthorized importation into the United States, the sale for importation, and/or the sale within the United States after importation, of certain digital cameras that directly, contributorily,or by inducement, infringe one or more claims of US. Patent Nos, 5,138,459 (the

"'459 patent"); 6,094,219 (the "'219 patent"); 6,233,010 (the "'OlO patent"); 6,323,899 (the
"'899 patent"); and 6,496,222 (the "'222 patent") (collectively, the "Roberts patents"). Copies
of the Roberts patents are attached as Exhibits 1-5.

1.3

The Roberts patents revolutionized the digital camera industry, enabling the rapid

3 I 1
f 1 'i i i !
11

growth and commercial success of digital cameras. Certain claims of the Roberts patents asserted here cover digital cameras that allow the formatting of captured images in the camera in a choice of file formats to make it easy to use the captured images in popular software programs on personal computers. Other claims of the Roberts patents asserted here cover digital cameras that can format digital storage media, such as a memory card, in a compatiblememory format. 1.4 The named inventors on the Roberts patents are Marc K. Roberts, Matthew A.

Chikosky, and Jerry A. Speasl (the "Inventors"). The Inventors conceived of the subject matter
claimed in the Roberts patents in late 1989 and filed their first patent application on November 20, 1990. The imentors assigned all right, title and interest in snd to the Roberts patents to their
..

company, Personal Computer Cameras, Inc. ("PCC"), in 1991, and the respective assignments were duly recorded with the United States Patent and Trademark Office ("PTO") on January 9, 1992. (Ex. 6.) 1

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1.5

On November 21, 1995, Complainant St. Clair acquired by assignment all right,

title, and interest in and to the Robert patents. (Ex. 7.) St. Clair duly recorded its assignment with the PTO on January 16,1996. (Ex. 8.) 1.6 St. Clair has devoted substantial time and resources to enforce and license the

Roberts patents. St. Clair has and continues to maintain a program to license the Roberts patents fiom its Michigan headquarters. To date, St. Clair has entered into agreements to license the Roberts patents andor settle patent litigation related to the Roberts patents with many of the world's largest companies selling digital cameras in the United States, namely: Canon, Casio, Seiko Epson, Kyocera, Minolta, Nikon, Olympus, Pentax, Samsung Techwin, and Sony. 1.7

Eastman Kodak Company ("Kodal~'~) digital cameras manufactured abroad sells

and imported into the United States that directly, contributorily, or by inducement, infringe the Roberts patents. These infringing products are being sold in the United States at the direct expense of St. Clair's U.S.-based licensing program and of those digital-camera manufacturers selling products in the United States that have agreements with St. Clair related to the Roberts patents. St. Clair here seeks an excIusion order and a cease-and-desist order to prevent Kodak from continuing to import products that infringe the Roberts patents into the United States axid sell those products once imported.
2.

COMPLAINANT ST. CLAIR
2.1

St. Clair Intellectual Property Consultants, Inc. ("St. Clair") is a Michigan

corporation having its principal pIace of business at 16845 Kercheval Avenue, Suite Number

Two, Grosse Painte, Mkhigm 48230. St. Clzir speclakes ir, consulting with companies md
individuals on intellectual property issues. St. Clair also has its own intellectual property portfolio. As titleholder to the digital-camera-technology patents at issue in this Complaint, St.

2

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.

Clair has devoted substantial time and resources to enforcing its patents, prosecuting additional, related patents, and offering licenses.
3.

PROPOSED RESPONDENT KODAK 3.1

Eastman Kodak Company ("Kodak") is a New Jersey corporation with its

principal place of business at 343 State Street, Rochester, New York 14650. Kodak sells digital cameras, among other things, in the United States. The iniiinging digital cameras at issue in this Complaint are manufactured by or on behalf of Kodak in Asia and are imported, sold for importation, andor sold after importationby Kodak in the United States.
4.

BACKGROUND OF THE ROBERTS PATENTS

a. 4.1

Nontechnical Description of the Roberts patents The Roberts patents relate to digital-camera technology. Each patent claims

different variations of the multiple inventive aspects and embodiments described in a common specification. 4.2 The claims of the Roberts patents asserted here can be separated into two basic

groups. The first group of asserted claims covers technology that relates to a digital camera's formatting of captured images in a choice of file formats. The second group of asserted claims covers technology that relates to a digital camera's formatting of storage media. 4.3 The asserted claims of the '459, '219, ,010, and '899 patents fall into the first

group. Specifically, the asserted claims of the '459, '219, '010, and '899 patents cover digital cameras that allow the formatting of captured images in the camera in a choice of file formats, such as PEG, MPEG, or TIFF, to make it easy to use the captured images in popular software programs on personal computers. Some but not all of the asserted claims of the '459, '219, ,010,

and '899 patents also specify that the covered digital cameras' memory be removable storage

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media, such as a memory card or floppy disk. The asserted claims of the '219 and '010 patents are apparatus claims, while the asserted claims of the'459 and '899 patents are method claims.

44 .

The asserted claims of the '222 patent fdl into the second group. These asserted

cIaims cover digital cameras that can format digital storage media, such as a memory card, in a compatible memory format. For example, certain asserted claims of the '222 patent cover digital cameras that can reformat a memory card fiom an Apple-compatible memory format to an IBMcompatible memory format. 4.5

In the case styled Eastman Kodak Co. v. Speasl (see paragraph 9.5 below), Kodak

has described the Roberts invention as a digital camera that can format data into one of a plurality of file formats which can be used in multiple applications.

46 .

Kodak's digital cameras can format data into one of a plurality of file formats

which can be used in multiple applications.

47 .

Kodak's digital cameras can detect whether a memory card is in a non-IBM-

compatible format and then reformat that memory card so that it is IBM compatible.

48 .

Although digital cameras as described above are ubiquitous today, the Roberts

inventions were pioneering and revolutio*zed the field of digital-cameratechnology. A detailed description of the prior art is contained in the Roberts patents' common specification.

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b.

PCC's and St.Clair's History with the Roberts Patents i.

St,CIair Assists PCC in Finding Business Opportunities

4.9

In 1990, the Inventors formed a company, Personal Computer Cameras, Inc.

("PCC"), and obtained start-up funding to develop and market their new digital camera 4.10

In 1992, PCC worked with St. Clair to find and develop business opportunities for
. .

PCC's new digital-camera technology. 4.1 1 In May 1992, St. Clair's Employees' Profit Sharing TGst invested in PCC with a $35,000 loan. In January 1993, St, Clair invested inPCC with an additional $15,000 loan. 4.12 Around this time, PCC and/or St. Clair approached a number of entities about

PCC's digital-camera invention, including, but not limited to, Kodak, Sony, Fujitsu, Canon,
Samsung Electronics, Hitachi, and Toshiba. All of the entities contacted by PCC and/or St. Clair

declined the opportunity to invest in or to participate in the development of PCC's digital-camera technology. 4.13
.

PCC's- public marketing of its digital-camera technology and prototype was

widespread and covered in the press. (See Exs. 9-12.) ii. 4.14

PCC Discusses a Business Relationship with Kodak

On January 15, 1992, David Lewis, Kodak's Manager of Concepts & Markets

Development, sent inventor Marc Roberts a Kodak non-disclosure agreement i response to n correspondence that Mr. Roberts had sent to Kodak concerning PCC. (Ex. 13.) 4.15

On February 5, 1992, PCC met with Kodak representatives at Kodak'

headquarters. At this meetiigg,Kod& discussed its newly fomed Electronic Lm@g Division
and proposed four options for its relationship with PCC: (1) acquiring or merging with PCC; (2)

licensing PCC's technology; (3) becoming a minority investor in PCC; or (4) creating an

original-equipment-man&acturing arrangement with PCC. (Ex. 14.)
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4.16

After the February 5, 1992 meeting, Mr. Roberts sent Kodak's Mr. Lewis a copy

of PCC's most recent business plan and a video. (Ex.15.) Mr. Roberts noted that PCC was

1 1

"excited at the potential business opportunities associated with Kodak" and that "[tlhe synergies that have been identified are limitless." 4.17 In early March 1992, Mr. Lewis met with PCC at PCC's headquarters in

CalXornia. (See Ex. 16.) 4.18 On March 18, 1992, Mr. Lewis, then in.Kodak's New Business Engineering

department, wrote Mr. Roberts as a follow up to his meeting with PCC, stating "I continue to share your enthusiasm for the development of PCC's computer camera offering. We at Kodak are certainly interested in computer cameras and the use of pictures as information and as a computer data type." (Ex. 16.) Mr. Lewis also stated that Kodak was "eager to review the PCC patent as soon as it is available in the public domain." 4.19 Over the next few months, Mr. Roberts and Jerry Speasl, another named inventor,

had numerous telephone conversations with Mr. Lewis, who had become Kodak's Manager of Computer Camera Products Marketing and Sales in North America and Europe.

In a

conversation on June 29, 1992, Mr. Lewis told Mr, Speasl that Kodak's new strategy for digital camera products was similar to PCC's. (Ex. 17.) Mr. Speasl advised Mr. Lewis that PCC's patent would issue on August 11, 1992, and that he would contact David Woods, Kodak's patent counsel, when that happened. 4.20 On August 17, 1992, Mr. Speasl sent Mr, Lewis a copy of PCC's recently issued

patent, (Ex. 18,) 4.21 On September 8, 1992, Mr. Speasl sent Mr. Lewis a letter regarding a business

relationship between Kodak and PCC. (See Ex. 19.)

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4.22

Mr. Lewis formally declined a business opportunity with PCC in a letter dated

September 11, 1992. (Ex. 19.) In this letter, however, Mr. Lewis noted that "[iln the spirit of

our many telephone conversations I have been careful to point out that strategies are subject to
change over time and I feel it is important that we maintain contact." 4.23

On October 7, 1992, David Woods, Kodak`s patent counsel, wrote PCC. (Ex.

20.) M i . Woods had been asked to evaluate PCC's patent "in relation to an electronic still,
computer-input camera effort with which Mr. Lewis [was] involved." In his letter, Mr. Woods stated that his study led him to conclude that PCC's patent is not applicable to such a camera "as currently envisioned by Kodak." The letter continued: ``Kodak has nothing underway at this time that would require a license under your patent." 4.24

On February 2, 1993, PCC issued a press release entitled ``Personal Computer

Cameras, Inc. announces digital camera product." (Ex.21.) This press release was distributed at
Kodak by a Kodak employee named Anthony Kelly. (Id.) Mr. Kelly requested PCC literature

soon thereafter, and Mr. Roberts sent Mr. Kelly information about PCC in response, (Ex. 22.)
4.25 Despite what Kodak told PCC in the early 1 9 9 0 Kodak went on to incorporate ~~

the digital-camera technology embodied in the Roberts patents in its digital cameras. iii. 4.26

St,Ciair Purchases All Right, Title, and Interest in and to the Roberts
Patents

After the digital-camera manufacturers contacted by PCC and/or St. Clair

declined PCC's invitations to invest or participate in the development of PCC's digital-camera technology, PCC entered into a business relationship with a Silicon Valley disk-drive manufacturer called Aura Associates ("Aura"), which included a proposed merger. PCC and Aura continued to openly market PCC's patented digital-camera technology, but eventually, the

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business alliance between PCC and Aura failed. Facing potential bankruptcy, PCC once again turned to St. Clair for assistance. 4.27 St. Clair agreed to help sort out all outstanding disputes between PCC and Aura

At this time, PCC was deep in debt, had no viable prospects for generating revenue, and risked losing its patents through foreclosure. As one of PCC's creditors, St. Clair could have enforced its promissory notes worth approximately $50,000. 4.28

On November 21, 1995, St. Clair entered into a Patent Purchase Agreement with

n PCC to purchase all right, title and interest i and to the Roberts patents. (Ex. 7.) The purchase
price of $60,000 was to allow PCC to satisfy and pay off its immediate debts. The agreement also included payments to PCC of half of any net future revenue fkom licenses or settlements relating to the Roberts patents. St. Clair agreed to take over management and maintenance of the entire Roberts patent portfolio worldwide, which included full responsibility for the costs, attorney's fees, PTO fees, and any other expenses associated with preparing and filing related patent applications and maintaining issued patents.
4.29
\

St. Clair conducted its own due diligence on PCC's title before purchasing the

patents.
4.30

As a result of St. Clair's investment in PCC, St. Clair had become familiar with

PCC and had knowledge of the identity and backgrounds of a number of PCC's investors, the inventors' incorporation and subsequent patent assignments to PCC, PCC's open communications with various camera manufacturers regarding the patented technology, and

3CC's public marketing m i press relating io the patented iecinnoiogy. c
4.31

St. Clair performed or caused to be performed a search of the assignment records

of the PTO.

8
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4.32

St. Clair confirmed through Jerry Speasl in his capacity as an officer of PCC that

the Inventors had not signed any agreements specifically relating to the assignment of patents to any previous employers, including Mirage Systems, Inc. ("Mirage"). Mi. Speasl told St. Clair that the only assignment of the Roberts patents was to PCC.
4.33

St. Clair M e r confirmed through Mr. Speasl that Mirage had no "shop rights"

to the patented technology.
4.34

St. Clair also confirmed through Mr. Speasl that Mirage's business, research, or

development was completely unrelated to the patented technology.
4.35

St. Clair also learned through Mr. Speasl that the inventors were not employed by

Mirage to invent or to develop new products.
4.36

St. Clair c o n k e d through Mr, Speasl that the Inventors worked on the invention

on their own time, using their own resources.
4.37

St. Clair also confirmed, through Mr. Speasl, that the digital camera invention and

the patenting of the invention had been disclosed to Mirage, including Mirage principal George Moussally, and that neither Mr. Moussally nor anyone else at Mirage expressed an interest in the disclosed digital-cameratechnology.
4.38

St. Clair examined each of the specified and identified potential encumbrances

that PCC enumerated in the Patent Purchase Agreement.
4.39 4.40

St. Clair received a warranty and representation of title fiom PCC. Upon completion of St. Clair's due diligence, which revealed no conflicting

claims to PCC's ntle, St. Clair entered into the Patent Purchase Agreement with PCC on November 21, 1995 and timely recorded its assignment of the '459 patent and related patents and applications with the PTO on January 16,1996 pursuant to 35 U.S.C.

4 261. As further detailed

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below, in the decade that followed, St. Clair devoted, and continues to devote, substantial time and resources to enforcing these patents, prosecuting additional related patents, and offering licenses.
5.

THE ROBERTS PATENTS 5.1 On August 11, 1992, United States Letters Patent No. 5,138,459 (the "'459

patent") entitled "Electronic Still Video Camera with Direct Personal' Computer (PC) Compatible Digital Format Output" was duly and legally issued to PCC, as assignee of the Inventors. (Ex. 1.) The '459 patent issued ikom U.S. application Serial No. 07/615,848, filed on November 20,1990.
5.2

As described above, on or about November 21, 1995, St. Clair acquired

ownership of PCC's digital camera patents and technology, including the '459 patent, by assignment. (Ex. 7.) Within three months of St. Clair's purchase, St. Clair recorded its assignment with the PTO pursuant to 35 U.S.C. 0 261, (Ex. 8.)

5.3

On July 25, 2000, United States Letters Patent No. 6,094,219 (the "'219 patent")

entitled "Electronic Still Video Camera with Direct Personal Computer (PC) Compatible Digital Forma Output" was duly and legally issued to St. Clair as assignee. (Ex. 2.) The '219 patent issued from US. application Serial No. 08/651,562, filed on May 22, 1996, which is a continuation of U.S. application Serial No. 08/098,787, filed on July 29, 1993 (now U.S. Patent

No. 5,576,757),which is a continuation of U.S. application Serial No, 071878,603, filed May 5,
1992 (abandoned), which is a continuation of U.S. application Serial No. 07/615,848, filed on Xcvember 20,1990 (ncw the '459 patent). 5.4
On May 15,2001, United States Letters Patent No. 6,233,010 (the "'010 patent")

entitled "Electronic Still Video Camera with Direct Personal Computer (PC) Compatible Digital

li Formal Output" was duly and legally issued to St. Car as assignee. (Ex, 3.) The '010patent
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issued fiom U.S. application Serial No. 09/253,831, filed on February 19, 1999, which is a continuation of U.S. application Serial No. 08/712,433, filed September 11, 1996 (pending), which is a continuation of US. application Serial No. 08/098,787, filed on 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. 07/615,848, filed on November 20, 1990 (now the '459 patent).
5.5

On November 27, 2001, United States Letters Patent No. 6,323,899 (the "'899

patent") entitled "Process for Use in Electronic Camera" was duly and legally issued to St. Clair

as assignee. (Ex.4.) The '899 patent issued from U.S. application Serial No. 09/541,285, filed
April 3, 2000, which is a continuation of U.S. application Serial No. 08/651,562, filed on May 22, 1996 (now the '219 patent), which is a continuation of U.S. application Serial No. 08/098,787, filed on July 29, 1993 (now U.S. Patent No. 5,576,757), which is a continuation of

US. 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).
5.6 On December 17, 2002, United States Letters Patent No, 6,496,222 (the "'222

patent") entitled `Digital Camera with Memory Format Initialization" was duly and legally issued to St. Clair as assignee. (Ex. 5.) The '222 patent issued &om U.S. application Serial No. 09/724,374, filed November 27, 2000, which is a continuation of U.S. application Serial No. 09/253,831, filed on February 19, 1999 (now the '010 patent), which is a continuation of U.S. application Serial No. 08/712,433, filed September 11, 1996 (pending), which is a continuation

of V.S. appiication Seriai No. 08/098,78`7, fiied on July 29, 1993 (now U.S. Patent No.
5,576,757)' which is a continuation of US.application Serial No. 07/878,603, filed May 5, 1992

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(abandoned), which is a continuation of U.S.application Serial No. 07/615,848, filed on November 20,1990 (now the '459 patent). 5.7 Copies of the Roberts patents are attached as Exhibits 1-5. Certified copies of the

Roberts patents, certified copies of the Roberts patents' assignment record, certified copies of the PTO prosecution history for each of the Roberts patents, and copies of each material technical reference mentioned in the prosecution histories of each patent accompany this Complaint as Appendices A-G and L.
5.8

St. Clair is the owner of all right, title and interest in and to the Roberts patents. The Roberts patents are valid. The Roberts patents are enforceable. The Roberts patents are valuable. The following are all of the issued foreign patents andor patent applications that

5.9 5.10 5.11 5.12

relate to the Roberts patents: Country Status Granted Germ2Dly Great Britain Japan Japan Japan Granted Granted Abandoned Granted Pending Application No./ Filing Date NO. 2095817 November 20,199 1 No. 92902180.6 November 20,1991 No. 92902180.6 November 20,199 1 No. 4502638 November 20,199 1 No. 200267371 March 12,2002 No. 200462416 March 5,2004 NO. 1993-701490 November 20,1991 Patent No.1 Issue Date No. 2095817 January 1,2002 No. 69131138.2 April 14,1999 No. 0558670 April 14,1999 da

No. 3741656 November 18,2005 da
No. 222359 July5,1999

I SouthKorea
1

1 Granted
I

5.13

Claims of the '459, '219, ,010, and '899 patents have been construed by the

United States District Court for the District of Delaware in St.'Clair Intellectual Property

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Consultants, Inc. v. Sony Corp., Civil Action No. 01-557 (JJF), by the Court's Memorandum
Opinion and Order dated September 3,2002. (Ex 23.) 5.14 Claims of the '459, '219, '010, and '899 patents have also been construed 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), by the Court's Memorandum

Opinion and Order dated August 31,2004. (Ex 24.) 5.15 On August 10, 2005, and on April 3, 2006, in response to reexamination

proceedings initiated by Sony, the PTO served notices that the reexamination proceedings were terminated and that it would issue ex parte reexamination certificates confirming patentability of all claims of the '459, '219, '010, and '899 patents. (Exs. 25-28,) On November 28,2006, the

PTO issued an ex parte reexamination certificate for the '899 patent. (Ex. 29.) On December
19,2006, the PTO issued an ex parte reexamination certificate for the '219 patent. (Ex. 30.) The reexamination file histories for the '459, '219, '010, and '899 patents are submitted herewith as Appendices H-K.

6 .

INFRINGEMENT OF THE ROBERTS PATENTS
6.1 Kodak infiinges directly, contributorily, or by inducement at least claim 16 of the

'459 patent, claims 1-3, 8, 10, 12, 16-18 of the '219 patent, claim 1 of the ,010 patent, claims 1-

ih 4 of the '899 patent, and claims 5, 6, 9-12 of the '222 patent wt certain digital cameras
manufactured, imported, used, sold for importation, andor sold after importation, including but not limited to Kodak's "Cy" "P" "V," "2," and "Easyshare One" series digital cameras, digital c m e m include the C543, ?880, V705, 2710, and Easyshare Representative idiii~gifig One (6MP) models. Claim charts applying an exemplary claim of each of the Roberts patents to these representative infringing digital camera models are attached as Exhibits 31-35. Physical

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samples of Kodak's models C643,P880, V705,2710, and 'Easyshare One (6MP)digital cameras accompany this Complaint in Appendix M.

7 .

IMPORTATION BY KODAK
7.1

Kodak sells digital cameras in the United States that infringe the Roberts patents. The infringing digital cameras at issue in this Complaint are rnanuiiictxred on

7.2

behalf of Kodak in Asia and are imported, sold for importation, andor sold after importation by Kodak in the United States.
7.3

As detailed on its packaging, Kodak's model C643 digital camera is made in

China. (See App. M.)
7.4

As detailed on its packaging, Kodak's model P880 digital camera is designed i n

Japan and made in Korea. (See App. M.)
7.5

As detailed on its packaging, Kodak's model V70S digital camera is designed in

Japan and made in Korea. (See App. M.)

76 .

As detailed on its packaging, Kodak's model 2710 digital camera is designed in

Japan and made in China. (See App. M.)

11
1I JU

7.7

As detailed on its packaging, Kodak's model Easyshare One (6IvfP) digital

camera is designed in Japan and made in China. (See App. M.)
7.8

u

On August 1,2006, Kodak announced that it would divest its entire digital camera

manufacturing requirements to a Singapore-based company, including assembly, production, and

6) testing. (Ex. 3 .

u
l i

7.9

Kodak's sale of im-ported in6iaghg prodwts his had a significant negative

impact on St. Clair's United States-based licensing program. Kodak's substantial share of the almost $7 billion US.digital camera market comes at the direct expense of those digital camera manufacturers selling products in the United States that have agreements with St. Clair related to 14

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Roberts patents, In 2004, for example, Kodak became the top seller of digital cameras in the United States, passing St. Clair's licensee Sony. (Ex. 37.) 7.10 On information and belief, the accused products that infringe the Roberts patents

are assigned a U.S. Harmonized Tariff Schedule Number under the 2006 Harmonized T r f aif
Schedule of the United States. Specifically, St. Clair believes that the unlawful importations occur under the following subheading: 9006 ("`Photographic (other than cinematographic) cameras; photographic flashlight apparatus and flash bulbs other than discharge lamps of heading 8539; parts and accessories thereof`'). This is an exemplary classification for illustration only and is not intended to restrict the accused products.
8.

DOMESTIC INDUSTRY 8.1 Kodak's importation and sale of digital cameras that infkinge the Roberts patents

hurt a domestic industry. A domestic industry exists wt respect to St. Clair's digital-camera ih
technology by virtue of St. Clair's and its licensees' extensive activities in the United States.
a.

St. Clair's Domestic Activity

8.2

St. Clair has made a substantia1 investment in the domestic exploitation of the

Roberts patents through its research, development, and licensing activities relating to the digitalcamera technology protected by the Roberts patents' claims. See 19 U.S.C. $ 1337(a)(3)(C). 8.3

As stated above, St. Clair specializes in consulting with companies and

individuals on intellectual property issues, in addition to having its own intellectual property portfolio. St. Clair's licensing program related to the Roberts patents, which it has maintained

for over a decade, is

s!

significant part of St. Clair`s business. St. Clzir's licensing progmm
I

related to the Roberts patent constitutes the vast majority of St. Clair's business activities and is the primary source of St. Clair's revenue.

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84 .

St. Clair currently employs five (5) domestic employees in activities related to the

Roberts patents. These activities account for the majority of each employee's time and include, but are not limited to, the development, marketing, licensing, and enforcement of the Roberts patents. 8.5 St. Clair's expenditures to sustain its licensing program, which includes litigation

to enforce its rights under the Roberts patents, are and have been substantial. A detailed.
summary of St. Clair's expenditures related to licensing and enforcement of the Roberts patents

is included as part of Confidential Exhibit 38. 8.6

In the decade that has folIowed St. Clair's purchase of all right, title, and interest

in and to the Roberts patents, St. Clair has approached numerous entities about licensing the Roberts patents. 8.7 invitation.
8.8

St. Clair invited Sony to license the Roberts patents, but Sony declined St. Clair's

Digital cameras sold in the United States by Sony incorporate the digital-camera

technology covered by certain claims of the Roberts patents. 8.9

On August 14, 2001, St. Clair filed suit against Sony Corporation, Sony

Electronics, Inc. and Sony Corporation of America in the United States District Court for the District of Delaware alleging infringement of the '459, '219, ,010, and '899 patents. (St. Clair

Intellectual Property Consultants,Inc. v. Sony Corp., Civil Action No. 01-557-JJF.)
8.10

By unanimous jury verdict on February 25, 2003, the jury in St. Clair v. Sony

Corp. found 15 asserted claims of the '459, '219, '010, and '899 patents irrfringed by digital
cameras sold in the United States by Sony Corporation, Sony Electronics, Inc. and Sony Corporation of America and awarded damages in the amount of $25,000,000. (Ex. 39.)

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8.11 patents.

Sony has since entered into an agreement with St. Clair to license the Roberts

A summary of St. Clair's licensing revenue from its agreement with Sony is included

as part of Confidential Exhibit 38.
8.12

St. Clair also invited Canon, Casio, Seiko Epson, Fuji, Kyocera, Minolta, Nikon,

and Olympus to license the Roberts patents, but these.entities declined St. Clair's invitation.
8.13

Digital cameras sold in the United States by.Canon, Casio, Seiko Epson, Fuji,

Kyocera, Minolta, Nikon, and Olympus incorporate the digital-camera technology covered by certain claims of the Roberts patents.

8.14 On February 28,2003, St. Clair filed suit against Canon Inc,, Canon U.S.A., Inc.,
Casio Computer Co., Ltd., Casio, Inc., Seiko Epson Corporation, Epson America, Inc., Fuji Photo Film Co., Ltd., Fuji Photo Film U.S.A., Inc., FujiFilm America, Inc., Kyocera Corporation, Kyocera International, Inc. Kyocera Optics, Inc., Minolta Co., Ltd, Minolta Corporation, Nikon Corporation, Nikon, Inc., Olympus Optical Co., Ltd., and Olympus America,

Inc. in the United States District Court for the District of Delaware alleging infringement of the

' 5 , '219, '010, and '899 patents. (St. Clair Intellectual Property Consultants, Inc. v. Canon, 49
Inc., Civil ActionNo. 03-241-JJF.)
8.15

Casio, Seiko Epson, Kyocera, Minolta, Nikon, and Olympus have since entered

into agreements with St. Clair to license the Roberts patents. A summary of St. Clair's licensing revenue from its agreements with these companies is included as part of ConfidentialExhibit 38.
8.16

By unanimousjury verdict on October 8,2004, the jury in St. Clair v. Canon, Inc.

found 16 asserted claims ofthe '459, '219, 'OiO, and '899 patents not invaiici and infiinged by digital cameras sold in the United States by Canon, Inc. and Canon USA, Inc. and awarded damages to St. Clair in the amount of $34,716,482.49. (Ex. 40.)

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8.17

St. Clair's action against Canon, Inc. and Canon U.S.A., Inc. has been resolved

under confidential terms. A summary of St. Clair's revenue from its agreement with Canon is included as part of Confidential Exhibit 38.
8.18

By majority verdict on October 25, 2004, the jury in St. Clair v. Fuji (part of the

St. Clair Y. Canon, Inc. litigation) found 16 asserted claims of the '459, '219, '010, and '899

patents not invalid and infringed by digital cameras sold in the United States by Fuji Photo Film, Co., Ltd., Fuji Photo Film U.S.A., Jnc., and Fujifilm America, Inc., and awarded damages to St. Clair in the amount of $3,003,465.00. (Ex. 41.)
8.19

St. Clair also invited Samsung, Matsushita, Nokia, Hewlett-Packard, and Kodak

to license the Roberts patents, but these entities declined St. Clair's invitation. 8.20 Digital cameras sold in the United States by Samsung, Matsushita, Nokia,

Hewlett-Packard, and Kodak infiinge the Roberts patents.
8.21

On November 9,2004, St, Clair filed suit against Samsung Electronics Co., Ltd.,

Samsung Electronics America, Inc., Samsung Telecommunications America, L.P., Matsushita Electric Industrial Co., Ltd., Matsushita Electric Corporation of America, Victor Company of
Japan, Ltd., JVC Company of America, Nokia Corporation, Nokia, Tnc., Hewlett-Packard

Company, and Eastman Kodak Company alleging infringement of the '459, '219, ,010, and '899 patents. (St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co., Civil Action No. 04-1436-JJF.)
8.22

St. Clair invited Siemens, Audiovox, and UTStarcom to license the Roberts

patents, but these entities deciined St. Ciair's invitation.
8.23

Digital cameras sold in the United States by Siemens, Audiovox, UTStarcom,

BenQ, Sprint Nextel, and Verizon infringe the Roberts patents.

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8.24

On June 26,2006, St. Clair filed suit against Siemens AG, Siemens Corporation,

BenQ Corporation, BenQ America Corporation, BenQ Mobile GMBH & Co., Audiovox Communications Corporation, Audiovox Electronics Corporation, UTStarcom, Inc., Sprint Nextel Corporation, Cingular Wireless L.L.C., New Cingular Wireless Services, Inc., Verizon Communications, Inc., Vodafone Group PLC, and Cellco Partnership alleging infringement of the '459, '219, '010, and '899 patents. (St. Clair Intellectual Property Consultants, Inc. v.

Siemens AG, Civil Action No. 04-403-JJF.)
8.25

St. Clair also invited LG, Motorola, Palm, Sanyo, Concord Camera, Kyocera

Wireless, Vivitar, and Aiptek to license the patents in suit, but these entities declined St. Clair's invitation. 8.26 Digital cameras sold in the United States by LG, Motorola, Palm, Sanyo, Concord

Camera, Kyocera Wireless, Vivitar, Aiptek, Polaroid, High Tech Computer, and T-Mobile infringe the Roberts patents. 8.27 On June 26,2006, St, Clair filed suit against LG Electronics, Inc., LG Electronics

U.S.A.,Inc., LG Electronics Mobilcomm U.S.A., Inc. Motorola, Inc., Palm, Inc., Sanyo Electric
Co., Ltd., Sanyo North America Corporation, Concord Camera Corporation, Kyocera Wireless Corporation, Vivitar Corporation, Petters Group Worldwide, L.L.C., Polaroid Holding Company, Polaroid Corp., Aiptek International, hc., Aiptek, Inc., High Tech Computer Corp., H.T.C. (B.V.1.) Corp., HTC USA, Inc., Deutsche Telekom AG, T-Mobile International AG & Co. KG, and T-Mobile U.S.A., Inc. alleging infringement of the '459, '219, '010, and '899 patents. (St.
C ~ G1i.rtelleciuat'?roper@ Consulianfs,Inc. v. LG Eiecironics, inc., Civil Action No. 04-404~Y

JJF.)

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8.28

In addition to those companies listed above, Pentax Corporation and Samsung A

Techwin, Inc. have entered into agreements with St. Clair to license the Roberts patents.

summary of St. Clair's licensing revenue fiom its agreements with these two companies is
included as part of Confidential Exhibit 38.
8.29

St. Clair's principal place of business is and has been, since the company's

inception, in Grosse Pointe, Michigan. All of St. Clair`s business activities, including without limitation the development, marketing, licensing, and enforcement of the Roberts patents, is based at St. Clair's Michigan headquarters, which is approximately 2200 square feet.
b.
8.30

St,Clair's Licensees' Domestic Activities
St. Clair's licensees have made significant investments in domestic plant and

equipment, significant domestic employments of labor or capital, andor substantial investments
in engineering andor research and development related to the digital-camera technology

embodied by the Roberts patents. See U.S.C. Q 1337(a)(3)(A), (3) and (C).
8.31

The digital camera market in the United States will generate close to $7 billion in

revenue in 2006. Sales of digital cameras in the United States by St. Clair`s licensees account for the majority of this market. To sustain their significant share of the U.S. digital camera market, St. Clair's licensees each have U.S. subsidiaries which employ many domestic employees to, among other things, market, develop and service digital cameras sold in the United States. For example, Nikon maintains two facilities, one in Melville, NY, and one i El n Segundo, CA, to service the digital cameras that it sells in the United States. (See Ex. 42.)
8.3% Submitted with this Complaint as Confidentiai Appendix N are copies of St.

Clair's agreements with digital camera manufacturers, which specifically contemplate the Roberts patents.

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9.

IWLATED LITIGATION

9.1

On August 14, 2001, St. Clair filed suit against Sony Corporation, Sony

Electronics, Inc., and Sony Corporation of America in the United States District Court for the District of Delaware (Civil Action No. 01-557-JJF) alleging i n t g e m e n t of the '459, '219, '010, and '899 patents. (See paragraphs 8.7-8.1 1 above.) 9.2 On October 28, 2002, Sony initiated reexamination proceedings for the '459,

'219, '010, and '899 patents. (In re Reexamination o US.Patent No. 5,138,459, Control No. f

90/006,435; In re Reexamination o US.Patent No. 6,094,219, Control No. 901006,436; In re f

Reexamination o US.Patent No. 6,233,010, Control No. 901006,437; and In re Reexamination f
o US.Patent No. 6,323,899, Control No. 901006,438.) As detailed in paragraph 5.15, on f

August 10, 2005 and April 3,2006, the PTO served notices that the reexamination proceedings were terminated and that it would issue ex parte reexamination certificates confirming patentability of all claims of the '459, '219, '010, and '899 patents. On November 28, 2006, the

PTO issued the ex parte reexamination certificate for the '899 patent. On December 19, 2006,
the PTO issued the ex parte reexamination certificate for the '219 patent. 9.3 On February 28,2003, St. Clair filed suit against Canon Inc., Canon U.S.A., Inc.,

Casio Computer Co., Ltd., Casio, Inc., Seiko Epson Corporation, Epson America, Inc., Fuji

Photo Film Co., Ltd., Fuji Photo Film U.S.A., Inc., FujiFilm America, Inc., Kyocera
Corporation, Kyocera International, Inc. Kyocera Optics, Inc., Minolta Co., Ltd, Minolta Corporation, Nikon Corporation, Nikon, Inc., Olympus Optical Co., Ltd., and Olympus America,

hc. in the United States District Court for the District of Delaware (Civil Action No. 03-24iJJF) alleging infringement of the '459, '219, '010, and '899 patents. (See paragraphs 8.12-8.18 above.)

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9.4

On November 9, 2004, St. Clair filed suit against Samsung Electronics Co., Ltd.,

Samsung Electronics America, Inc., Samsung Telecommunications America, L.P., Matsushita Electric Industrial Co., Ltd., Matsushita Electric Corporation of America, Victor Company of Japan, .Ltd., JVC Company of America, Nokia Corporation, Nokia, Inc., Hewlett-Packard Company, and Eastman Kodak Company in the United States District Court for the District of Delaware (Civil Action No. 04-1436-JJF) alleging infringement of the'459, '219, 'OlO,.and '899 patents. (See paragraph 8.21 above.)

In answering St. Clair's Complaint on January 27,2005,

Kodak alleged that the '459, '219, '010, and '899 patents were invalid and unenforceable and did

not challenge St. Clair's standing to sue or St. Clair's title to the'459, '219, '010, and '899 patents. Kodak has not made any allegation and has not asserted any defense that St. Clair is not the true owner of all right, title, and interest in and to the '459, '219, '010, and '899 patents.

This action is presently stayed.
9.5

On April 12,2005, Mirage Systems, Inc. filed suit against St. Clair and others in

the Superior Court of the California, County of Santa Clara, claiming that Mirage owns the Roberts patents and seeking, among other things, title to the Roberts patents. (MirageSystems,

Inc. v. Speasl, Case No. 1-05-CV-039164.) Through an agreement signed on May 20, 2005,
Kodak-already a defendant in St. Clair's patent-infringement action filed in the District of acquired Mirage's purported rights to the Roberts

Delaware on November 9, 2004-allegedly

patents. On May 24,2006, Kodak was substituted as the Plaintiff in this California action, and the action is now styled Eastman Kodak Co. v. Speml. St. Clair has vigorously defended against
& ~meritless suii and has filed a cross-complaint seeking to quiet titie and alleging that 'Mirage s

ih and others intentionallyinterfered wt St. Clair's business and the enforcementof its patents.

,

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9.6

On May 6,2005, St. Clair filed suit against Mirage Systems, Inc. and against two

Mirage principals, George J. Moussally and Kenneth L. Ford, in the United States District Court for the District of Delaware, seeking to quiet title to the Roberts patents as well as to recover tort damages for undermining St. Clair's ownership rights and interfering with St. Clair's ability to license the Roberts patents. (St. Clair Intellectual Property Consultants, Inc. v. Mirage Systems,

Inc., Civil Action No. 05-273-JJF.) Kodak was .substituted for Mirage as a defendant with
respect to certain counts in this action on June 23,2005. Defendants Moussally and Ford were dismissed for improper venue on March 8,2006. This action is presently stayed.

9.7

On June 26,2006, St. Clair filed suit against Siemens AG, Siemens Corporation,

BenQ Corporation, BenQ America Corporation, BenQ Mobile GMBH & Co., Audiovox
Communications Corporation, Audiovox Electronics Corporation, UTStarcom, Inc., Sprint Nextel Corporation, Cingular Wireless L.L.C., New Chgular Wireless Services, Inc., Verizon Communications, Inc., Vodafone Group PLC, and Cellco Partnership alleging infringement of the '459, '219, '010, and '899 patents. (St, Clair Intellectual Property Consultants, Inc, v.

Siemens AG, Civil Action No. 04-403-JJF.) This action is presently stayed.
9.8

Also on June 26, 2006, St. Clair filed suit against LG Electronics, Inc., LG

Electronics U.S.A., Inc., LG Electronics Mobilcomm U.S.A., Inc. Motorola, Inc., Palm, Inc.,

Sanyo Electric Co., Ltd., Sanyo North b e n c a Corporation, Concord Camera Corporation,
Kyocera Wireless Corporation, Vivitar Corporation, Petters Group Worldwide, L.L.C., Polaroid Holding Company, Polaroid Corp., Aiptek International, Inc., Aiptek, Inc., High Tech Computer

Corp., H.T.C. p.V.i.1 Corp., RTC USA, he., Deutsche Telekom AG, T-Mobile International

AG & Co. KG, and T-Mobile U.S.A., Inc. alleging infringement of the '459, '219, '010, and

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'899 patents. (St. Clair Intellectual Property Consultants, Inc, v. LG Electronics, Inc., Civil Action No, 04-404-JJF.) This action is presently stayed. 9.9 There have not been any court or agency proceedings related to the Roberts

patents other than those listed in this section.
10.

REQUEST FOR RELIEF

WHEREFORE, by reason of the foregoing, Complainant St. Clair requests that the
United States InternationalTrade Commission: (a) Institute an immediate investigation pursuant to Section 337 of the Tariff Act of

1930, as mended, 19 U.S.C. (i 1337, with respect to violations of that section based on the importation into the United States, sale for importation, andor the sale within the United States after importation, by Eastman Kodak Company, its affiliates, subsidiaries, successors, or assigns of digital cameras covered by or infringing one or more claims of U.S. Patent Nos. 5,138,459; 6,094,219; 6,233,010; 6,323,899; and 6,496,222;
(b)

Set a target date of not more than 12 months for completing the investigation; Schedule and conduct a hearing pursuant to Section 337(c) of the Tariff Act of

(c)

t 4

1930, as amended, 19 U.S.C. Q 1337, for purposes of receiving evidence and hearing argument concerning whether there has been a violation of Section 337, and following the hearing, determine that there has been a violation of Section 337; (d) Issue a permanent exclusion order pursuant to 19 U.S.C. Q 1337(d) excluding

entry into the United States of digital cameras covered by or infringing one or more of claims

US. Patent Nos. 5,138,459; 6,094,219; 6,233,010; 6,323,899; and 6,496,222;

if
;_3

(e)

Issue a permanent cease-and-desist order pursuant to 19 U.S.C.

8

1337(f)

prohibiting Eastman KO&

Company, their affiliates, subsidiaries, successors, or assigns from

engaging in the importation, sale for importation, marketing (including via the Internet or 24

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electronic mail), offering for sale (including via the Internet or electronic mail), distribution, the sale after importation (or otherwise transferring within the United States), and providing or offering marketing, sales, or any engineering or technical support services related to all unlicensed digital cameras covered by or infi-inging one or more claims of US. Patent Nos. 5,138,459; 6,094,219; 6,233,010; 6,323,899; and 6,496,222; and
(f) issue such other and further relief as the Commission deems just and proper under the

law, based upon the facts determined by the investigation and the authority of the Commission.

Dated: January 19,2007

w
Respectfully submitted, Ronald J. Schutz (PTO No. 32491; MN Bar No. 4130849) Becky R. Thorson (MN Bar No. 254861) Carrie M. Lambert (h4N Bar No. 3 14067) Bruce D. Manning (MN Bar No. 03 12289) David B. Zucco (MN Bar No. 0339799) ROBINS, KAPLAN, MILLER & CIRESI L.L.P. 800 LaSalle Avenue, Suite 2800 Minneapolis, MN 55402 Telephone: (612) 349-8500

MP3 20206709.1

ATTORNEYS FOR ST. CLAIR INTELLECTUAL PROPERTY CONSULTANTS,INC.

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VERIFICATION OF COMPLAINT
I, Edmund M. Chung, President of St. Clair Intellectual Property Consultants, Inc., for and on behalf of St. Clair Intellectual Property Consultants, Inc., declare under penalty of perjury, in accordance with 19 C.F.R. are true: 1. 2.

$9 210.4(c) and 210.12(a), that the following statements

I am duly authorized to execute this verification.
I have read the foregoing Complaint and am familiar with the allegations and

statements contained therein.
3.

To the best of my knowledge, information and belief, founded after reasonable

inquiry, the allegations and other factual contentions in the Complaint are well grounded in fact, have evidentiary support, or are likely to have evidentiary support after a reasonable opportunity for M e r investigation for discovery.

4.

To the best of my knowledge, information and belief, founded after reasonable

inquiry, the allegations, statements, and legal contentions made in the Complaint are warranted by existing law or a good faith argument for the extension, modification, or reversal of existing law. 5.
. ..

The foregoing Complaint is not being filed for any improper purpose, such as to

harass or to cause unnecessary delay or needless increase in the cost of litigation.

Executed this

1 %p of January, 2007. 6 ay

Edrnund M. Chung

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