Kyocera Communications, Inc. v. Eastman Kodak Company

Filing 1

COMPLAINT with Jury Demand against Eastman Kodak Company (Filing fee $350 receipt number 0974-4329195), filed by Kyocera Communications, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B)The new case number is 3:12-cv-57-WQH-RBB. Judge William Q. Hayes and Magistrate Judge Ruben B. Brooks are assigned to the case. (Woodmansee, Mark)(atty maintenance)(rlu) (av1).

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M. ANDREW WOODMANSEE (CA SBN 201780)
[e-mail]
E. DALE BUXTON II (CA SBN 222580)
[e-mail]
CHRISTIAN G. ANDREU-VON EUW (CA SBN 265360)
[e-mail]
PAMELA MCELROY (CA SBN 26535)
[e-mail]
MORRISON & FOERSTER LLP
12531 High Bluff Drive
San Diego, California 92130-2040
Telephone: [phone]
Facsimile: 858.720.5125
Attorneys for Plaintiff,
KYOCERA COMMUNICATIONS, INC.

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UNITED STATES DISTRICT COURT
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SOUTHERN DISTRICT OF CALIFORNIA
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Case No. '12CV0057 WQHRBB

KYOCERA COMMUNICATIONS, INC.,
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Plaintiff,

COMPLAINT FOR
DECLARATORY JUDGMENT

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v.
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EASTMAN KODAK COMPANY,

DEMAND FOR J URY TRIAL

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Defendant.
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Plaintiff Kyocera Communications, Inc. (“KCI”), for its Complaint for Declaratory
Judgment against Defendant Eastman Kodak Company (“Kodak”), alleges as follows:
NATURE OF THE ACTION

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1.

KCI brings this action pursuant to 28 U.S.C. §§ 2201 and 2202 and seeks a

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judicial declaration that U.S. Patent Nos. 5,493,335 (“the ’335 patent”) and 6,292,218 (“the ’218

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patent”) are invalid and not infringed by KCI’s cellular phones which also incorporate digital

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camera technology. A copy of the ’335 patent is attached hereto as Exhibit A. A copy of the

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’218 patent is attached hereto as Exhibit B.

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CASE NO.___________________
KYOCERA COMPLAINT

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PARTIES
2.

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Plaintiff KCI is a corporation organized and existing under the laws of Delaware,

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with its principal place of business at 9520 Town Center Drive, San Diego, California 92121.

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KCI is the sales, marketing and service headquarters for Kyocera-branded products and

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accessories in the United States.
3.

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KCI is a wholly owned subsidiary of Kyocera Corporation (“KCJ”), a Japanese

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corporation with its principal office at 6 Takeda Tobadono-cho, Fushimi-ku, Kyoto-shi 612-8501,

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Japan. For over fifty years KCJ has been an innovator in ceramic components for electronics, as

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well as an innovator and a leader for over a decade in discovering, patenting, and implementing

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new technology for computer printers, multifunction products (MFPs) and other diverse

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technologies such as telecommunications equipment.
4.

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On information and belief, Defendant Kodak is a corporation existing under the

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laws of New Jersey with its principal place of business at 343 State Street, Rochester, New York

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14650.

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JURISDICTION AND VENUE
5.

This Court has subject matter jurisdiction over KCI’s claims under the patent laws

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of the United States, 35 U.S.C. § 1 et seq. and under the Declaratory Judgment Act 28 U.S.C. §

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2201 et seq. This Court has subject matter jurisdiction over KCI’s claims pursuant to at least 28

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U.S.C. §§ 1331, 1338(a), 2201 and 2202.

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6.

The Court has personal jurisdiction over Defendant Kodak. This Court has

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jurisdiction over Kodak at least because Kodak has continuous and systematic business contacts

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in California. On information and belief, Kodak researches and designs inkjet printers, MFPs,

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and printer supplies in the Southern District of California. Kodak’s business activities in

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California also include marketing, selling, and providing consumer support for its products. On

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information and belief, Kodak’s employees or agents also travel to and conduct Kodak’s business

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in California.

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7.

Venue is proper in this district pursuant to at least 28 U.S.C. § 1391.

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CASE NO.___________________
KYOCERA COMPLAINT

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THE CONTROVERSY RELATING TO THE ’335 AND ’218 PATENTS
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On information and belief, Kodak is the assignee, with purported enforcement

rights, of the ’335 and ’218 patents.
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On or about November 10, 1999, KCJ, KCI’s parent company, received a letter

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from Kodak’s licensing agent. That letter asserted that Kyocera products likely infringed various

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Kodak patents, including the ‘335 patent. A follow-up letter from Kodak’s licensing agent to

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KCJ dated December 1, 1999, further emphasized KCJ’s alleged “need for a license under the

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Kodak digital camera patent portfolio.”

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Between November 1999 and August 2002, KCJ and Kodak’s licensing agent held

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multiple meetings to negotiate a patent license agreement. Kodak’s licensing agent repeatedly

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asserted that various Kyocera products infringed both the ’335 and ’218 patents. For example, on

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September 13, 2001, Kodak’s licensing agent provided KCJ infringement reports claiming that

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two of KCJ’s products infringed the ’335 patent. On January 15, 2002, Kodak’s licensing agent

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identified specific claims of the ’218 patent it believed certain Kyocera products infringed.

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11.

KCJ and Kodak entered into a Patent License Agreement on August 21, 2002 (the

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“PLA”). The PLA has an effective date of April 1, 2002, and is in force for 10 years. The PLA is

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applicable to KCJ and all of its subsidiaries, including KCI.

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12.

KCJ entered into the PLA to avoid litigation. The terms of the PLA specifically

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state that KCJ does not acknowledge the validity or admit that any of its products infringe any of

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the licensed Kodak patents.

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13.

Since the PLA has been in effect, Kodak and its licensing agent have continually

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asserted that the ’335 and ’218 patents are relevant to Kyocera products. Letters sent by Kodak’s

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licensing agent on November 3, 2005, and January 13, 2006, for example, specifically state that

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the ’218 patent is relevant to Kyocera mobile camera phones. At a February 2, 2006, meeting,

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Kodak’s licensing agent again told KCJ that both the ’335 and ’218 patents were relevant to

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Kyocera products which incorporate digital camera technology.

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14.

The PLA will expire on March 31, 2012.

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CASE NO.___________________
KYOCERA COMPLAINT

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Since 2010, KCJ and Kodak have engaged in discussions regarding the need for

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Kyocera to enter into a patent license agreement after expiration of the current PLA in March

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2012. Those discussions have been unsuccessful.

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Kodak has engaged in serial litigation against manufacturers and sellers of mobile

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phones who do not have current patent license agreements with Kodak. Kodak has, for example

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filed suits alleging infringement of the ’335 or the ’218 patents against at least Sony Corp., Apple

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Inc., Research in Motion Ltd., Samsung Ltd., LG Electronics; and Matsushita Electric Industrial

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Company.1

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KCI markets and sells Kyocera products in the United States, including wireless

phone devices incorporating digital camera technology.
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KCI does not infringe, induce infringement of, or contribute to the infringement of

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any valid claim of the ’335 or ’218 patents because, when properly interpreted, such claims do

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not describe or encompass—either literally or by equivalents—any product made, used, offered

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for sale, or sold by KCI; nor any product that KCI induces others to make, use, or sell; nor any

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product to which KCI contributes to making, using, or selling.

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19.

Furthermore, the claims of each of the ’335 and ’218 patents are invalid for failing

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to comply with the requirements of the Patent Laws of the United States, particularly with regard

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to one or more of the requirements specified in Sections 101, 102, 103, and/or 112 of Title 35 of

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the United States Code.

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20.

An actual, substantial and continuing justiciable controversy exists between KCI

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and Kodak regarding the validity of the ’335 and ’218 patents and/or alleged infringement thereof

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by KCI. Kodak has asserted that Kyocera products using digital camera technology are covered

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by the ‘335 and ‘218 patents and require that Kyocera enter into a new license agreement as to

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those patents after the PLA expires on March 31, 2012. KCI, however, maintains that it can

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For Sony Corp., see Case No. 6:04-CV-06095 (W.D.N.Y.). For Apple Inc. and RIM,
see Inv. No. 337-TA-703 (ITC). For Samsung Ltd. and LG Electronics, see Inv. No. 337-TA-663
(ITC). For Matsushita, see Case. No. 6:07-CV-00352 (E.D. Tex.).

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CASE NO.___________________
KYOCERA COMPLAINT

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market and sell Kyocera products incorporating digital camera technology in the United States

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after March 31, 2012 without entering into a new license to the ‘335 and ‘218 patents.

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CLAIM ONE
(Declaratory Judgment of Invalidity of the ’335 patent)

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21.

KCI incorporates by reference all allegations set forth in Paragraphs 1 through 20

of its Complaint as if set forth fully herein.

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22.

One or more claims of the ’335 patent are invalid for failing to comply with the

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requirements of the Patent Laws of the United States, particularly with regard to one or more of

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the requirements specified in Sections 101, 102, 103, and/or 112 of Title 35 of the United States

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Code.

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23.

KCI is entitled to a judicial determination that one or more claims of the ’335

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patent are invalid for failing to comply with the requirements of the Patent Laws of the United

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States.

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CLAIM TWO
(Declaratory Judgment of Non-Infringement of the ’335 patent)

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24.

KCI incorporates by reference all allegations set forth in Paragraphs 1 through 23

of its Complaint as if set forth fully herein.

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25.

KCI has not infringed, induced infringement of, or contributed to the infringement

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of any valid claim of the ’335 patent because when properly interpreted such claims do not

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describe or encompass, either literally or by equivalents, any product made, used, offered for sale,

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or sold by KCI; nor any product that KCI induces others to make, use, or sell; nor any product to

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which KCI contributes to making, using, or selling.

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KCI is entitled to a judicial determination that KCI has not infringed, induced

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infringement of, or contributed to infringement of, any valid claim of the ’335 patent under any

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infringement theory.

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///

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CASE NO.___________________
KYOCERA COMPLAINT

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CLAIM THREE
(Declaratory Judgment of Invalidity of the ’218 patent)

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KCI incorporates by reference all allegations set forth in Paragraphs 1 through 26

of its Complaint as if set forth fully herein.
28.

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One or more claims of the ’218 patent are invalid for failing to comply with the

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requirements of the Patent Laws of the United States, particularly with regard to one or more of

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the requirements specified in Sections 101, 102, 103, and/or 112 of Title 35 of the United States

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Code.
29.

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KCI is entitled to a judicial determination that one or more claims of the ’218

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patent are invalid for failing to comply with the requirements of the Patent Laws of the United

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States.

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CLAIM FOUR
(Declaratory Judgment of Non-Infringement of the ’218 patent)

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30.

KCI incorporates by reference all allegations set forth in Paragraphs 1 through 29

of its Complaint as if set forth fully herein.
31.

KCI has not infringed, induced infringement of, or contributed to the infringement

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of any valid claim of the ’218 patent because when properly interpreted such claims do not

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describe or encompass, either literally or by equivalents, any product made, used, offered for sale,

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or sold by KCI; nor any product that KCI induces others to make, use, or sell; nor any product to

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which KCI contributes to making, using, or selling.

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KCI is entitled to a judicial determination that KCI has not infringed, induced

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infringement of, or contributed to infringement of, any valid claim of the ’218 patent under any

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infringement theory.

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PRAYER FOR RELIEF
WHEREFORE, KCI respectfully prays for relief as follows:

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(i)

Judgment that one or more claims of the ’335 patent are invalid under one or more

of the statutory provisions of Title 35 of the United States Code;
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CASE NO.___________________
KYOCERA COMPLAINT

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(ii)

Judgment that no valid claim of the ’335 patent is infringed by KCI under any

infringement theory;
(iii)

Judgment that one or more claims of the ’218 patent are invalid under one or more

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of the statutory provisions of Title 35 of the United States Code;
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(iv)

Judgment that no valid claim of the ’218 patent is infringed by KCI under any

infringement theory;

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(v)

An award to KCI of its costs;

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(vi)

Judgment that this is an exceptional case and an award to KCI of its reasonable

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attorneys’ fees under 35 U.S.C. § 285 and/or the inherent discretion of the Court; and
(vii)

Such further relief as this Court may deem just, equitable and appropriate.

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Dated: January 9, 2012

MORRISON & FOERSTER LLP

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By:

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s/ M. Andrew Woodmansee
M. ANDREW WOODMANSEE
[e-mail]
E. DALE BUXTON II
[e-mail]
CHRISTIAN G. ANDREU-VON EUW
[e-mail]
PAMELA MCELROY
[e-mail]
Attorneys for Plaintiff
KYOCERA COMMUNICATIONS, INC.

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CASE NO.___________________
KYOCERA COMPLAINT

CIVIL COVER SHEET

JS 44 (Rev. 09/11)

The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided
by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating
the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

I. (a) PLAINTIFFS
KYOCERA COMMUNICATIONS, INC.
(b)

County of Residence of First Listed Plaintiff

DEFENDANTS
EASTMAN KODAK COMPANY

San Diego

County of Residence of First Listed Defendant
(IN U.S. PLAINTIFF CASES ONLY)
IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.

(EXCEPT IN U.S. PLAINTIFF CASES)
NOTE:

(c)

'12CV0057 WQHRBB

Attorneys (Firm Name, Address, and Telephone Number)

Attorneys (If Known)

M. Andrew Woodmansee (CA SBN 201780)
E. Dale Buxton II (CA SBN 222580)
Christian G. Andreu-von Euw (CA SBN 265360)
Pamela McElroy (CA SBN 26535)
MORRISON & FOERSTER LLP
12531 High Bluff Drive
San Diego, California 92130-2040
Telephone: [phone]; Facsimile: 858.720.5125

II. BASIS OF JURISDICTION

(Place an "X" in One Box Only)

III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X" in One Box for Plaintiff)

1

U.S. Government
Plaintiff

3 Federal Question
(U.S. Government Not a Party)

(For Diversity Cases Only)
PTF
1
Citizen of This State

2

U.S. Government
Defendant

4

Citizen of Another State

2

2

Citizen or Subject of a
Foreign Country

3

3

Diversity
(Indicate Citizenship of Parties in Item III)

and One Box for Defendant)
PTF
DEF
4
4
Incorporated or Principal Place
of Business In This State

DEF
1

Incorporated and Principal Place
of Business In Another State

5

5

6

6

Foreign Nation

IV. NATURE OF SUIT (Place an "X" in One Box Only)
CONTRACT
110 Insurance
120 Marine
130 Miller Act
140 Negotiable Instrument
150 Recovery of Overpayment
& Enforcement of Judgment
151 Medicare Act
152 Recovery of Defaulted
Student Loans
(Excl. Veterans)
153 Recovery of Overpayment
of Veteran's Benefits
160 Stockholders' Suits
190 Other Contract
195 Contract Product Liability
196 Franchise
REAL PROPERTY
210 Land Condemnation
220 Foreclosure
230 Rent Lease & Ejectment
240 Torts to Land
245 Tort Product Liability
290 All Other Real Property

V. ORIGIN
1 Original
Proceeding

TORTS
PERSONAL INJURY
310 Airplane
315 Airplane Product
Liability
320 Assault, Libel &
Slander
330 Federal Employers'
Liability
340 Marine
345 Marine Product
Liability
350 Motor Vehicle
355 Motor Vehicle
Product Liability
360 Other Personal
Injury
362 Personal Injury Med. Malpractice
CIVIL RIGHTS
440 Other Civil Rights
441 Voting
442 Employment
443 Housing/
Accommodations
445 Amer. w/Disabilities Employment
446 Amer. w/Disabilities Other
448 Education

FORFEITURE/PENALTY

PERSONAL INJURY
365 Personal Injury Product Liability
367 Health Care/
Pharmaceutical
Personal Injury
Product Liability
368 Asbestos Personal
Injury Product
Liability
PERSONAL PROPERTY
370 Other Fraud
371 Truth in Lending
380 Other Personal
Property Damage
385 Property Damage
Product Liability
PRISONER PETITIONS
510 Motions to Vacate
Sentence
Habeas Corpus:
530 General
535 Death Penalty
540 Mandamus & Other
550 Civil Rights
555 Prison Condition
560 Civil Detainee Conditions of
Confinement

625 Drug Related Seizure
of Property 21 USC 881
690 Other

Removed from
State Court

VI. CAUSE OF ACTION

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Remanded from
Appellate Court

OTHER STATUTES

PROPERTY RIGHTS
820 Copyrights
830 Patent
840 Trademark
LABOR
710 Fair Labor Standards
Act
720 Labor/Mgmt. Relations
740 Railway Labor Act
751 Family and Medical
Leave Act
790 Other Labor Litigation
791 Empl. Ret. Inc.
Security Act

IMMIGRATION
462 Naturalization Application
463 Habeas Corpus Alien Detainee
(Prisoner Petition)
465 Other Immigration
Actions

(Place an "X" in One Box Only)

2

BANKRUPTCY
422 Appeal 28 USC 158
423 Withdrawal
28 USC 157

4 Reinstated or
Reopened

5

SOCIAL SECURITY
861 HIA (1395ff)
862 Black Lung (923)
863 DIWC/DIWW (405(g))
864 SSID Title XVI
865 RSI (405(g))

FEDERAL TAX SUITS
870 Taxes (U.S. Plaintiff or
Defendant)
871 IRS—Third Party
26 USC 7609

Transferred from
another district
(specify)

375 False Claims Act
400 State Reapportionment
410 Antitrust
430 Banks and Banking
450 Commerce
460 Deportation
470 Racketeer Influenced and
Corrupt Organizations
480 Consumer Credit
490 Cable/Sat TV
850 Securities/Commodities/
Exchange
890 Other Statutory Actions
891 Agricultural Acts
893 Environmental Matters
895 Freedom of Information
Act
896 Arbitration
899 Administrative Procedure
Act/Review or Appeal of
Agency Decision
950 Constitutionality of
State Statutes

6 Multidistrict
Litigation

Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity): 28
Brief description of cause:

U.S.C. §§ 2201 and 2202

Declaratory Judgment action regarding US patents -- US 5,493,335 and US 6,292,218
VII. REQUESTED IN
COMPLAINT:

CHECK IF THIS IS A CLASS ACTION
UNDER F.R.C.P. 23

DEMAND $

CHECK YES only if demanded in complaint:
JURY DEMAND:
Yes
No

VIII. RELATED CASE(S)
IF ANY

(See instructions):

JUDGE

DATE

January 9 2012

DOCKET NUMBER

SIGNATURE OF ATTORNEY OF RECORD

/s/ M. Andrew Woodmanse

FOR OFFICE USE ONLY
RECEIPT #

AMOUNT

APPLYING IFP

JUDGE

MAG. JUDGE

JS 44 Reverse (Rev. 09/11)

INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
Authority For Civil Cover Sheet
The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as required
by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the
use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of Court for each civil
complaint filed. The attorney filing a case should complete the form as follows:
I.
(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use only
the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then the official, giving
both name and title.
(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land condemnation
cases, the county of residence of the "defendant" is the location of the tract of land involved.)
(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section "(see attachment)".
II.
Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.C.P., which requires that jurisdictions be shown in pleadings. Place an "X" in one
of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the
Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes precedence, and box
1 or 2 should be marked.
Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of
the different parties must be checked. (See Section III below; federal question actions take precedence over diversity cases.)
III.
Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this section
for each principal party.
IV.
Nature of Suit. Place an "X" in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is
sufficient to enable the deputy clerk or the statistical clerks in the Administrative Office to determine the nature of suit. If the cause fits more than one nature of
suit, select the most definitive.
V.

Origin. Place an "X" in one of the seven boxes.

Original Proceedings. (1) Cases which originate in the United States district courts.
Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. When the petition
for removal is granted, check this box.
Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing date.
Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict
litigation transfers.
Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407. When this
box is checked, do not check (5) above.
Appeal to District Judge from Magistrate Judgment. (7) Check this box for an appeal from a magistrate judge's decision.
VI.
Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional statutes
unless diversity.
Example:
U.S. Civil Statute: 47 USC 553
Brief Description: Unauthorized reception of cable service
VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
Demand. In this space enter the dollar amount (in thousands of dollars) being demanded or indicate other demand such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
VIII. Related Cases. This section of the JS 44 is used to reference related pending cases if any. If there are related pending cases, insert the docket numbers
and the corresponding judge names for such cases.
Date and Attorney Signature. Date and sign the civil cover sheet.

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