United States District Court, S.D. New York
For the Plaintiff: Robert J. Gunther, Wilmer Cutler Pickering Hale & Dorr LLP, New York, NY; Michael J. Summersgill, and Jordan L. Hirsch, Wilmer Cutler Pickering Hale & Dorr LLP, Boston, MA.
For the Defendant: David Eiseman, and Philip C. Sternhell, Quinn Emanuel Urquhart & Sullivan LLP, Washington, DC; Ryan S. Goldstein, Quinn Emanuel Urquhart & Sullivan LLP, Los Angeles, CA; Melissa J. Bailey, Quinn Emanuel Urquhart & Sullivan LLP, San Francisco, CA.
OPINION AND ORDER
DENISE COTE, United States District Judge.
On December 3, 2013, Ricoh Company, Ltd. (" Ricoh" ) filed a renewed motion for judgment as a matter of law, pursuant to Rule 50, Fed.R.Civ.P., to vacate a jury verdict entered against it in this contract action brought by Eastman Kodak Company (" Kodak" ). For the reasons set forth below, the motion is denied.
In April 2012, Kodak filed this suit against Ricoh, alleging tat Ricoh had breached the terms of a 2001 Patent Licensing Agreement (" PLA" ), by failing to pay royalties on " Digital Cameras" (a term defined below) sold by Pentax, which was a
company that Ricoh acquired in 2011. Pentax sold two types of digital cameras relevant to this action: point-and-shoot cameras, and Digital Single-Lens Reflex (" DSLR" ) cameras. Furthermore, Pentax sold DSLR cameras in at least two ways: the DSLR camera body was sometimes sold on its own; sometimes it was sold in a " kit" with one or more DSLR lenses. Kodak contended that Ricoh was liable under the PLA to pay royalties on Pentax's sales of point-and-shoot cameras and DSLR camera bodies sold in a kit with a DSLR lens.
In an Opinion and Order of August 9, 2013, partial summary judgment was granted to Kodak. Eastman Kodak Co. v. Ricoh Co., Ltd., 12 Civ. 3109 (DLC), 2013 WL 4044896 (S.D.N.Y. Aug. 9, 2013). It was determined that, because Pentax did not have a license to Kodak's patents for digital cameras, Ricoh was liable under the PLA to pay royalties on all Pentax digital cameras meeting the PLA's definition of Digital Cameras. [WL] at *8-*11. It was also determined that Pentax's point-and-shoot cameras met the Digital Cameras definition. [WL] at *13-*14. There remained, however, a question of fact as to whether Pentax's DSLR camera bodies sold in a kit with a DSLR lens were Digital Cameras, as defined in the PLA. [WL] at *14-*15.
In an Order of August 9, the case was placed on the October 2013 trial-ready calendar. In an Order of September 10, the trial was scheduled for October 21.
On the eve of trial, the parties stipulated to the amount of damages on Pentax's point-and-shoot cameras and, if Ricoh were liable for royalties on DSLR cameras, the amount of damages on Pentax's DSLR camera bodies sold in a kit. Thus, the sole issue for the jury to determine was whether Pentax's DSLR camera bodies sold in a kit with a DSLR lens met the Digital Cameras definition in the PLA.
The PLA defined " Digital Camera" as follows:
[a] portable, self-contained device utilizing an Area Image Sensor having at least 300,000 pixels, as well as electronics and optical elements that captures still or motion images of visible radiation and (a) records a digital signal representing such images on a Removable Digital Storage Media or (b) stores at least two such images in internal memory.
(emphasis added). The key dispute was whether a DSLR camera body sold in a kit with a DSLR lens was a " self-contained device." At summary judgment, the term " self-contained" had been defined as " complete in itself" or " complete, or having all that is needed, in itself." Eastman Kodak Co. v. Ricoh Co., Ltd., 2013 WL 4044896, at *14. The ...