Eastman Kodak Company v. Apple Inc. et al

Filing 1

MOTION TO WITHDRAW THE BANKRUPTCY REFERENCE. Bankruptcy Court Case Numbers: 12-1720A, 12-B-10202 (ALG).Document filed by Apple Inc.. (Attachments: # 1 Exhibit 1 - Part 1, # 2 Exhibit 1 - Part 2)(bkar)

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MATTHEW D. POWERS (Bar No. 104795)
STEVEN S. CHERENSKY (Bar No. 168275)
GREGORY D. HULL (Bar No. 57367)
WELL, GOTSHAL & MANGES LLP
201 Redwood Shores Parkway
Redwood Shores, CA 94065
Telephone: [phone]
Facsimile: [phone]
[e-mail]
[e-mail]
[e-mail]

3: 2

Attorneys for Plaintiff
APPLE INC.
SUPERIOR COURT OF CALIFORNIA
COUNTY OF SANTA CLARA
110
APPLE INC.,

Case No.
Plaintiff,

v.
EASTMAN KODAK COMPANY
Defendant.

UNLIMITED CIVIL CASE
COMPLAINT FOR BREACH OF
CONTRACT, CONVERSION,
DECLARATION OF OWNERSHIP,
UNFAIR COMPETITION, AND BREACH
OF CONFIDENCE
,JURY TRIAL DEMANDED.
COMPLAINT

1.

This is a civil action brought by Plaintiff Apple Inc. ("Apple") to enjoin

Kodak from further profiting from Apple's intellectual property and to recover economic damages
and intellectual property from Defendant Eastman Kodak Company ("Kodak") as a result of
Kodak's breach of contract under Cal. Civ. Code § 3300 et seq.; Kodak's conversion; Kodak's acts
of unfair competition under the common law and Cal. Bus. & Prof. Code § 17200 and 17500 et
seq.; and Kodak's breach of confidence.
2.

As the paragraphs below detail, in the early 1990s Apple developed a digital

camera architecture involving an LCD viewfinder for live motion preview of images. During this
period, Apple approached Kodak about potentially working with Apple to commercialize this
digital camera architecture. Apple revealed confidential details of its digital camera development
COMPLAINT FOR BREACH OF CONTRACT

program to Kodak. In breach of contractual and common law obligations—and unbeknownst to
Apple until recently—Kodak wrongfully took this information and claimed it as Kodak's own in
applying for and obtaining one or more United States patents. Kodak subsequently engaged in an
aggressive licensing campaign supported by at least one such patent, earning Kodak over $1 billion.
3.

In support of its complaint, Apple alleges as follows:
PARTIES

4.

Apple is a corporation organized under the laws of California with its

principal place of business located at 1 Infinite Loop, Cupertino, California 95014.
On information and belief, Kodak is a corporation organized under the laws of New
Jersey with its principal place of business located at 343 State Street, Rochester, New York 14650.
JURISDICTION
5.

This is an action arising under the laws of the State of California, including

Cal. Civ. Code § 3300 et seq. and Cal. Bus. & Prof. Code § 17200 and 17500 et seq. The damages
sustained by Apple are in excess of the jurisdictional minimum of this Court.
6.

Personal jurisdiction exists over Kodak because, as set forth below, Kodak

has committed acts in this State that are the subject of Apple's claims herein and has injured Apple.
Kodak has specifically availed itself of the laws of California in doing so.
VENUE
7.

Venue over Apple's claims is proper in this district pursuant to the

California Code of Civil Procedure § 395(a) because Kodak conducts business in Santa Clara
County, Apple is located in Santa Clara County, and many of the acts complained of occurred in
Santa Clara County.
BACKGROUND FACTS COMMON TO ALL CAUSES OF ACTION

I.

Introduction
8.

Apple is a leading designer and manufacturer of personal computers,

portable digital media players, and mobile communications devices. Apple's personal digital
media and communications products, such as the iPhone, the iPod line of digital media players, and
the iPad, are groundbreaking products that revolutionized their respective industries, enjoy
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COMPLAINT FOR BREACH OF CONTRACT

enormous commercial success and popular acclaim, and continue to lead their fields in innovation,
performance, and ease of use. Apple's product portfolio also includes its industry-leading line of
Macintosh desktop and notebook computers, including the iMac and MacBook products such as the
MacBook Pro and ultra-light MacBook Air, and its portfolio of software, such as the Mac OS X
operating system that comes pre-installed on every Macintosh computer.
9.

Apple's history of launching technically innovative and commercially

successful products stems from its ongoing commitment to research and development ("R&D").
For decades Apple has made substantial investments in R&D in a wide variety of technical fields,
including digital camera technology, computer hardware and software, graphical and touch-based
user interfaces, digital media players, digital imaging, and personal communications.
Substantially all of this R&D has been conducted by employees located at the company
headquarters in Cupertino, Santa Clara County, California. The U.S. Patent and Trademark Office
has awarded Apple patent protection for many of Apple's innovations, including patents relating to
digital cameras, and Apple continues to seek and obtain patent protection for its recent and ongoing
innovations.
10.

On information and belief, Kodak is a company engaged in the business of

selling, inter alia, digital cameras and accessories. Kodak sells many of these products and
services in Santa Clara County. But like its other operations, Kodak's sales and profits from the
sale of these devices has declined substantially. Kodak has earned an annual profit only once since
2004. In 2009, Kodak's net loss amounted to $210 million, and in 2008, its sales shrunk 19%.
Kodak hired a new CEO in 2005, who turned to an aggressive patent litigation strategy as a means
to generate cash for the company's operations. One patent to which Kodak has turned to make up
for its inability to compete in the marketplace is U.S. Patent No. 6,292,218 (the '218 patent"),
which claims a digital camera capable of capturing an image while previewing the scene to be
captured on an LCD screen. Within the last two years, Kodak has filed a number of patent
infringement actions based in part on the '218 patent, and has claimed to have received over one
billion dollars in settlement of those litigations.

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COMPLAINT FOR BREACH OF CONTRACT

11.

In furtherance of its litigation strategy, on January 14, 2010, Kodak

requested that the U.S. International Trade Commission ("ITC") institute an investigation to
determine whether Apple's iPhone products—which contain a digital camera—violated Section
337 of the Tariff Act of 1930 by reason of Apple's purported infringement of the '218 patent. That
complaint resulted in the institution of Investigation No. 337-TA-703 ("the 703 Investigation").
As part of that complaint, Kodak requested an order that would prohibit importation of all of
Apple's current iPhone products into the United States, and enjoin Apple from selling any such
products already in the United States. Kodak also filed a complaint asserting the '218 patent
(along with another Kodak patent) in the United States District Court for the Western District of
New York (Civil Action No. 6:10-CV-06021)("the '021 case") seeking monetary damages based on
Apple's alleged infringement of the '218 patent. Given the potential economic severity of Kodak's
requested relief, in early 2010, Apple launched an extensive internal investigation into Apple's
prior relationship with Kodak in the 1990s to determine what Apple disclosed to Kodak concerning
the development of digital camera technology. Apple's investigation, summarized in sections
II-IV below, revealed that Apple is the rightful owner of the '218 patent pursuant to disclosures
made by Apple to Kodak and contracts made between the parties in the early 1990s. Indeed,
Apple disclosed the architecture for its confidential digital camera technology to Kodak subject to
non-disclosure agreements, which also provided that any improvements Kodak made to Apple's
disclosures remain the property of Apple. By using Apple's disclosures to draft and prosecute the
`218 patent and claim ownership thereof, Kodak is in breach of its agreements with Apple, has
unlawfully converted Apple's intellectual property for Kodak's use, and has improperly reaped
substantial benefits from such conversion. Kodak has also breached its duty of confidence owed
to Apple and has engaged in unfair competition.
II.

Apple and the Relevant Technology
12.

By the early 1990s, Apple was already researching a variety of digital

camera technologies within its Advanced Technology Group. In 1992, the typical consumer
camera user was a film camera that needed to be held up to the user's face in order to capture an
image. Apple developed prototypes and completed user studies to explore possible digital camera
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COMPLAINT FOR BREACH OF CONTRACT

implementations. This research sparked enough interest within Apple that Apple began
investigating whether the research could be developed into a viable product. Apple employee Eric
Zarakov and his team eventually developed a set of features and an architecture for a digital
camera.
13.

The camera architecture was developed around the central concept of a

digital still camera with an LCD viewfinder for live color preview, including sound annotations for
still images, review and playback of images and sounds, and easy transfer of the images to a
computer or other digital device.
14.

As early as February 1992, Apple had built a working prototype to

demonstrate the experience of using a color display as a live viewfinder and review tool.
15.

During Apple's development of the digital camera architecture, Apple

sought potential original equipment manufacturer ("OEM") to work with Apple to commercialize
and manufacture the camera. Because Apple's core expertise was in computers and digital
processing, Apple looked for OEMs with experience producing sensors, lens systems, and displays
it could use to implement the architecture Apple had designed. Kodak was one such potential
OEM.
III. The Relationship Between Apple and Kodak
16.

Apple formalized an agreement with Kodak in early 1990. Apple and

Kodak explored how the two companies could work together on various projects, including the
commercialization of Apple's digital cameras. Apple was considering whether Kodak could
supply certain components for its digital camera. In 1991 and 1992, representatives from Apple
and Kodak met to discuss digital camera technology. Named inventors of the '218 patent,
Timothy Tredwell and Kenneth Parulski, each attended at least one such meeting each.
17.

One such meeting occurred on November 17 and 18, 1992, in Rochester,

New York. Apple and Kodak met to discuss more specifically what Kodak could offer as part of
Apple's development of Apple's proposed digital camera architecture. Apple employees Eric
Anderson, Eric Zarakov, and Scott Fullam attended that meeting. A named inventor of the '218
patent, Timothy Tredwell, among others, attended the meeting for Kodak. At that meeting, Apple
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COMPLAINT FOR BREACH OF CONTRACT

presented to Kodak the confidential architecture and design of Apple's digital camera, and Kodak
presented to Apple information about Kodak's lenses and CCDs. Members of Apple's digital
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camera project team met with members of Kodak's imaging department, and Apple disclosed to

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Kodak's imaging department the architecture for a digital still camera with live color preview.

5 i Apple also disclosed the use of a high-powered, multitasking processor.
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18.

Apple's disclosures to Kodak at the November 17-18, 1992 meeting are

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confirmed in contemporaneous documents. For example, Mr. Zarakov of Apple sent a letter to

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David Lewis of Kodak on January 25, 1993 in order to commemorate the details of Apple's

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disclosure to Kodak. Specifically, Mr. Zarakov described that Apple disclosed a digital signal

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processor as a microprocessor, as well as certain video subsystem architectures. In a voicemail

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transcribed at the time it was received, Mr. Lewis of Kodak acknowledged receipt of Mr. Zarakov's

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letter without disputing Mr. Zarakov's description of what Apple disclosed.

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i

Apple made another presentation to Kodak on February 19, 1993, specifying

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details such as the resolution and color filter pattern of the CCD and the LCD display. The

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February 1993 presentation also further memorialized the processing of still images disclosed by

16 Apple to Kodak at the November 17-18, 1992 meeting and as described in a November 24, 1992
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technical overview presentation.

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20.

In parallel with the February 19, 1993 presentation, Mr. Fullam drafted

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several block diagrams showing the components of Apple's camera architecture that supported still

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image capture and live color viewfinder. Those block diagrams further evidence the state of the

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development project at Apple in February 1993.

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21.

Kodak worked together with Apple to develop the Apple QuickTake 100

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camera, released in early 1994. That camera did not include Apple's live color preview

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architecture, but the digital imaging personnel at Apple continued to develop a digital still camera

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with live color preview. The core aspects of the live color preview camera architecture were

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incorporated into next-generation camera projects. These camera projects were also proposed by

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Apple to third parties, including Sanyo, and were ultimately developed by Apple in co-operation

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with Kodak.
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COMPLAINT FOR BREACH OF CONTRACT

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22.

In 1996, Apple's digital camera projects and certain of Apple's digital

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camera intellectual property and personnel were transferred to a company called FlashPoint.

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Apple's camera architecture, comprising a digital still camera with live color preview, was

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incorporated into a number of cameras using Apple's concept that were jointly developed by Kodak

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and FlashPoint, and sold by Kodak, including the Kodak DC-220, DC-260, DC-265, and DC-290.

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23.

During this period of cooperation, unbeknownst to Apple, Kodak was

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secretly taking Apple's innovations and claiming them as Kodak's own in at least one patent

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application filed with the U.S. Patent and Trademark Office. That application, which ultimately

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issued as the '218 patent, describes and appears to be based upon technology included in the

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confidential, proprietary disclosures Apple made to Kodak in the 1992-1993 time period.

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IV. The Agreements Between Apple and Kodak

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24.

Both Apple and Kodak understood that the discussions between them

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included the exchange of confidential information, and that each party would protect and respect

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the confidential information of the other, neither disclosing it to anyone else nor misusing the

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information for its own benefit. Indeed, the disclosures described above that were made by Apple

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to Kodak were made subject to non-disclosure agreements. The non-disclosure agreements

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contain provisions that any patentable improvements made to information disclosed under the

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non-disclosure agreement belong to the discloser and not the party who made the improvement.

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One such agreement signed by Kodak and Apple was dated December 20, 199/1 ten days prior to

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the filing of the application that led to the '218 Patent.

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25.

The 1994 agreement governed the parties' rights, both with regard to past

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and future work and specifies that any derivative work belongs to the company that made the

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original disclosure upon which the derivative work was based.

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26.

Another agreement is a confidentiality agreement between Apple and Kodak

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dated February 28, 1991—the same date that Apple and Kodak met to discuss, among other things,

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low-cost digital cameras. This agreement likewise has a provision specifying that any derivatives

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of information disclosed remain the property of the discloser. The five-year term of this

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agreement extends beyond the filing date of the application that led to the '218 Patent. Thus,
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COMPLAINT FOR BREACH OF CONTRACT

under the 1991 agreement, Apple owns any patent derived from confidential information provided
by Apple.
27.

There is no doubt that Apple considered its proprietary digital camera

designs to be confidential. Mr. Zarakov wrote Mr. Lewis to notify him of that fact. Included with
that letter were three figures reflecting various proprietary architectures disclosed to Kodak.
There is also no doubt that Kodak had notice of that fact and agreed to it. As explained above, Mr.
Lewis left a voicemail for Mr. Zarakov acknowledging receipt of a letter from Apple informing
Kodak that Apple considered its architecture to be confidential.
28.

Apple satisfied its confidentiality and other obligations under its agreements

with Kodak.
V.

Kodak's Wrongful Acts
29.

Apple revealed its confidential information to Kodak in confidence, which

Kodak unlawfully used to prepare its application for the '218 patent. The purpose of the patent
system is to encourage innovation by conferring on the patent holder a limited right to control who
can use its invention. Part of that control includes the ability to exclude others from using the
patented invention, as well as the ability to issue exclusive or nonexclusive licenses to the patented
invention, which can be extremely lucrative, as it has been for Kodak based on its litigation efforts
related to the '218 patent.
30.

Kodak's agreements that any derivatives based on Apple's disclosures

remain Apple's property makes Apple the rightful owner of the '218 patent. Moreover, Kodak's
agreement to assign ownership to Apple on derivatives of Apple's disclosures gives Apple
equitable rights in the '218 Patent. Additionally, Kodak's use of Apple's confidential information
and its failure to disclose and assign its rights to the '218 patent to Apple constitute breaches of the
parties' agreements and has unjustly enriched Kodak. Kodak has also unlawfully converted
Apple's intellectual property into its own property, has breached its duty of confidence with Apple,
and has committed acts of unfair competition.
31.

As explained above, Kodak has recently enjoyed litigation settlements and

royalties for the '218 patent that amount to over $1 billion. Kodak has further been unjustly
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COMPLAINT FOR BREACH OF CONTRACT

enriched at least in these amounts, and Apple has suffered and will continue to suffer actual
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damages by Kodak's unlawful assertion of ownership rights in the '218 patent. Indeed, Kodak has

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gone so far as to assert the '218 patent against Apple, thereby forcing Apple to incur attorneys' fees

4 I and other expenses in defending itself.
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VI.

Statutes of Limitations
32.

The causes of action alleged below carry either a two, three, or four-year

statute of limitations, placing the operative date in August of 2008, 2007, or 2006.
33.

California uses the "discovery rule" to determine when a cause of action

accrues for purposes determining the statute of limitations. A claim accrues when the plaintiff
discovers, or could have discovered through reasonable diligence, the injury and its cause.
34.

Apple did not discover, and could not have discovered through reasonable

diligence, Kodak's wrongful acts prior to August of 2008. Indeed, Kodak's very failure to

13 j disclose to Apple its improvements on Apple's technology prevented Apple from having any
14 knowledge of Kodak's wrongful acts; Kodak secretly pursued the '218 patent without informing
15 j Apple of its activities.
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35.

Kodak holds thousands of patents, and Apple could not have discovered

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through reasonable diligence prior to August 2008 that any one of those patents might implicate

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Apple's rights arising out of the parties' relationship in the early 1990s. In California, a plaintiff is

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under no duty to continuously monitor a defendant's activities to determine if a cause of action

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exists. Moreover, the '218 patent did not issue until 2001, some eight years after the parties'

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relationship had grown stale.

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36.

Kodak and Apple had additional discussions in the 2007-2008 time frame,

but, again, at no time during that period did Kodak assert or otherwise identify the '218 patent.

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2008, when Kodak first brought the '218 patent to Apple's attention.

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COMPLAINT FOR BREACH OF CONTRACT

FIRST CAUSE OF ACTION
(Breach of Contract)
37.

Apple incorporates by reference paragraphs 1 through 36 as though fully set

38.

Apple and Kodak entered into various contracts, including contracts dated

forth herein.

February 28, 1991 and December 20, 1994. Kodak committed significant acts in violation of these
various contracts, and Kodak failed to perform other significant acts that the various contracts
required Kodak to do. For example, Kodak breached the 1991 agreement in multiple ways,
including: 1) by unlawfully using Apple's confidential information without Apple's consent, 2)
by unlawfully claiming ownership of the '218 patent, and 3) by failing to grant Apple a royalty-free
license to the '218 patent and/or acknowledging Apple's ownership of the '218 patent. Kodak
likewise breached the 1994 agreement in multiple ways, including: 1) by unlawfully using
Apple's confidential information without Apple's consent, 2) by claiming ownership of the '218
patent, 3) by failing to disclose to Apple Kodak's derivative work, and 4) by failing to assign to
Apple Kodak's rights to the '218 patent.
39.

At no time was Kodak excused from having to perform all of the significant

acts that the contracts required, nor was Kodak permitted to commit acts in violation of the
contracts. Likewise, Apple has satisfied its obligations under its various agreements with Kodak.
40.

Apple has been and continues to be harmed significantly from Kodak's

breach of contract.
SECOND CAUSE OF ACTION
(Conversion)
41.

Apple incorporates by reference paragraphs 1 through 36 as though fully set

42.

Apple had ownership rights to the intellectual property it disclosed to Kodak

forth herein.

in the early 1990s concerning digital camera technology, and to all improvements thereon. Kodak
received Apple's intellectual property and made improvements to it in filing and prosecuting the
applications that led to the '218 patent. Kodak intentionally took possession of Apple's
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intellectual property for a significant period of time, and in claiming ownership to the '218 patent,
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prevented Apple from having access to its intellectual property.
43.

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intellectual property and improvements thereon.
44.

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Apple has been and continues to be harmed significantly from Kodak's

unlawful conversion of Apple's property.

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Kodak's conduct was the legal cause of Apple's harm.
THIRD CAUSE OF ACTION
(Declaration of Ownership)

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Apple did not consent to Kodak's use, possession, or ownership of Apple's

46.

Apple incorporates by reference paragraphs 1 through 36 as though fully set

47.

California Code of Civil Procedure § 1060 provides that "falny person

forth herein.

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interested under a written instrument, . . . or under a contract, or who desires a declaration of his or

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her rights or duties . . . in respect to, in, over or upon property, . . . may, in cases of actual

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controversy relating to the legal rights and duties of the respective parties, bring an original action

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or cross-complaint in the superior court for a declaration of his or her rights."

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48.

declared the rightful owner of the '218 patent.

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FOURTH CAUSE OF ACTION
(Unfair Competition)

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Apple requests that, based on the actions described herein, Apple be

49.

Apple incorporates by reference paragraphs 1 through 36 as though fully set

50.

Kodak has engaged in unfair competition under the California Business and

forth herein.

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Professions Code § 17200 and 17500

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and include any unlawful, unfair or fraudulent business act or practice."

et seq., which provide that "unfair competition shall mean

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51.

California Businesses and Professions Code § 17203 further provides that

"rainy person who engages, has engaged, or proposes to engage in unfair competition may be
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COMPLAINT FOR BREACH OF CONTRACT

enjoined in any court of competent jurisdiction. The court may make such orders or judgments . .
. as may be necessary to prevent the use or employment by any person of any practice which
constitutes unfair competition, as defined in this chapter, or as may be necessary to restore to any
person in interest any money or property, real or personal, which may have been acquired by means
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of such unfair competition."

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52.

The acts described in paragraphs 1 through 36 of this Complaint constitute

unlawful, unfair, and/or fraudulent business acts or practices on the part of Kodak.
(Unfair Business Acts)

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53.

Given the exclusionary power that a patent conveys, Kodak's actions have

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had a direct, discernible and anticompetitive impact on competition; that said anticompetitive

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conduct included, inter alia, Kodak's unfair demand for the royalties that Kodak has exclusively

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extracted from competitors in the marketplace for access to the '218 patent; in addition, Kodak has

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unfairly asserted a right and an ability to exclude others, including Apple, from practicing the

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disclosed invention. The above mentioned conduct, which has occurred as a result of Kodak's

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unfair use of the information disclosed to Kodak by Apple in confidence, has significantly

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threatened and harmed competition, and has therefore engaged in unfair conduct which constitutes

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unfair competition under § 17200 et seq. of the Business & Professions Code of the State of

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California.
(Unlawful Business Acts)

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54.

Apple invested substantial sums of money in the research and development

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of digital camera technology. Apple disclosed that technology to Kodak in confidence and

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pursuant to non-disclosure agreements, with the hopes of a possible joint development of digital

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camera projects. Kodak was prohibited from using Apple's technology or any improvements

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thereon, and from claiming ownership of Apple's technology or any improvements thereon.

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Kodak was further required to disclose to Apple any derivative works, and to assign to Apple the

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rights to any such derivative works. Rather than abiding its contractual obligations, Kodak instead

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used Apple's disclosure to prosecute an application for a U.S. patent, and claimed Apple's

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technology as its own. By doing so, Kodak has earned over a billion of dollars in litigation
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COMPLAINT FOR BREACH OF CONTRACT

settlements and royalties. In addition, and by reason of said conduct, Kodak violated one or more
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of the following statutes and regulations: 35 U.S.C. §§ 115 and 116; and 37 CFR 1.56 and 19 CFR

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210.4, and has therefore engaged in unlawful conduct which constitutes unfair competition under

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§§ 17200 et seq. of the Business & Professions Code of the State of California.

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55.

Apple has been and continues to be harmed significantly from Kodak's

wrongful acts.

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(Common Law Unfair Competition)

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56.

That by reason of the facts and circumstances mentioned above, Kodak has

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engaged in common law unfair competition; rather than abiding its contractual obligations, Kodak

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unlawfully used Apple's disclosures to prosecute an application for a U.S. patent and thereby

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passed off Apple's technology as its own.

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FIFTH CAUSE OF ACTION
(Breach of Confidence)

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57.

Apple incorporates by reference paragraphs 1 through 36 as though fully set

58.

The acts described in paragraphs 1 through 36 of this complaint constitute a

forth herein.

breach of confidence by Kodak against Apple under the common law of the State of California.
59.

Under the common law of California, a breach of confidence claim arises

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when (1) an idea, whether or not protectable, is offered to another in confidence, (2) is voluntarily

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received in confidence with the understanding that it is not to be disclosed, and (3) is not to be used

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by the receiving party beyond the limits of the confidence without express permission provided.

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60.

The information that Apple disclosed to Kodak, as described above, was

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highly confidential in nature. Apple took steps to protect the confidentiality of this information,

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including by entering into non-disclosure agreements with Kodak. Apple disclosed the

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information to Kodak in confidence, pursuant to the non-disclosure agreements. Pursuant to these

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agreements, Kodak had a duty of confidence not to use the information that Apple disclosed, and to

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disclose to Apple any works derived from Apple's disclosure.

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COMPLAINT FOR BREACH OF CONTRACT

61.

Kodak breached its duty of confidence in using Apple's confidential

information to conceive the alleged invention claimed in the '218 patent. Kodak took Apple's
confidential information, improved upon it, and engaged in a lengthy application process before the
U.S. Patent & Trademark Office in pursuit of the '218 patent. In so doing, Kodak unlawfully
disclosed Apple's confidential infoimation to the Patent Office and to the public.
62.

Apple has been and continues to be harmed significantly from Kodak's

breach of confidence.
PRAYER FOR RELIEF
WHEREFORE, Apple requests that this Court enter judgment against Kodak and
grant Apple the following relief:
1.

A judicial determination that Apple is the owner in equity and law of the

`218 patent under Cal. Civ. Code § 3380 and other applicable laws;
2.

An order of specific performance requiring Kodak to assign its rights to the

`218 patent to Apple.
3.

Restitution of all amounts which Kodak has received as a result of claiming

ownership of the '218 patent;
4.

An injunction permanently enjoining Kodak's use of the '218 patent and any

other property or work that Kodak derived from Apple's disclosures;
5.

An injunction permanently enjoining Kodak from seeking to enforce the

`218 patent or any other wrongfully obtained intellectual property right against Apple in any forum,
including the United States International Trade Commission and the United States District Courts.
6.

An award of punitive damages;

7.

A trial by jury;

8.

Attorneys' fees, costs, and expenses, including costs incurred as a result of

the ITC investigation instituted against Apple at Kodak's request; and

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COMPLAINT FOR BREACH OF CONTRACT

9.

For such other and further relief and damages as the Court deems proper.

Dated: August 25, 2010

VVEIL, GOTSHAL & MANGES LLP

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By:

1„

0(

Ma ewiD. Powers
rego y D. Hull
Attorneys for Plaintiff
APPLE INC.

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COMPLAINT FOR BREACH OF CONTRACT

EXHIBIT 12

300 North LaSalle
Chicago, Illinois 60654
Marcus E. Sernel, P.C.
To Call Writer Directly:
[phone]
[e-mail]

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Facsimile:
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www.kirkland.com

March 16, 2012
By E-Mail
Brian D. Glueckstein
Sullivan & Cromwell LLP
125 Broad Street
New York, NY 10004-2498
Re:

Apple’s claims of ownership to patents assigned to Kodak

Dear Brian:
I write in response to Kodak’s request for additional information regarding Apple’s
claims of ownership of patents presently assigned to Kodak. In an effort to move towards a fair
and prompt resolution of these claims, we provide the preliminary information below based on
our investigation to date.
Based on the information presently known to us, Apple intends to pursue claims with
respect to the following patents assigned to Kodak:
5,493,335
5,828,406
6,147,703
6,292,218
6,441,854
6,879,342
7,210,161
7,453,605
7,742,084
7,936,391
Apple’s ownership claims will be pursued based on at least the following causes of action:
correction of inventorship, breach of contract, conversion, unfair competition, deceptive business
practices, and/or breach of confidence. Apple seeks both monetary and injunctive relief,

K&E .

Brian D. Glueckstein
March 16, 2012
Page 2

including but not limited to damages for harm to Apple and recovery of funds improperly
received by Kodak, declarations of correction of inventorship and ownership, and any other
appropriate relief.
As you know, Apple has sought several times to move forward with litigation of its
ownership claims but has been blocked from doing so by Kodak. Apple has thus been unable to
further explain and develop its ownership claims within the context of the parties’ litigations, and
looks forward to the opportunity to do so. The information provided above is therefore
preliminary and subject to further refinement, including but not limited to when Apple is
afforded the opportunity to take discovery of Kodak with respect to these claims.
Apple’s identification of these patents and causes of action should not be viewed or
construed as an assertion of such claims for purposes of 11 U.S.C. § 362 or otherwise. We are
merely providing this information in response to Kodak’s informal request. Moreover, by this
letter, Apple does not waive, and in fact preserves, all of its rights and remedies, including
without limitation its jury trial rights and its rights to have any disputes with Apple adjudicated
by a district court.
We trust that our voluntary identification of these details regarding Apple’s ownership
claims should be more than sufficient to allow the parties to discuss an appropriate path forward
to adjudicate them. Please let me know if you have any questions or concerns.

Sincerely,
/s/ Marcus E. Sernel P.C.
Marcus E. Sernel, P.C.

EXHIBIT 13

Business Segment Review

Disclaimer
This presentation has been prepared by Eastman Kodak Company (the “Company”). It
contains general information about the Company’s activities as at the date of the presentation.
It is information given in summary form and does not purport to be complete.
This presentation is not, and nothing in it should be construed as, an offer, invitation or
recommendation in respect of the facilities or any of the Company’s securities, or an offer,
invitation or recommendation to sell, or a solicitation of an offer to buy, the facilities or any of
the Company’s securities in any jurisdiction. Neither this document nor anything in it shall form
the basis of any contract or commitment. This presentation is not intended to be relied upon as
advice to investors or potential investors and does not take into account the investment
objectives, financial situation or needs of any investor. All investors should consider such
factors in consultation with a professional advisor of their choosing when deciding if an
investment is appropriate.
The Company has prepared this presentation based on information available to it, including
information derived from public sources that have not been independently verified. No
representation or warranty, express or implied, is provided in relation to the fairness, accuracy,
correctness, completeness or reliability of the information, opinions or conclusions expressed
herein.
The 2011 financial information included in this presentation is preliminary, unaudited and
subject to revision upon completion of the Company's closing and audit processes.
All references to dollars are to United States currency unless otherwise stated.

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