Early Skirmishes in Discovery

• Author: Ronald K. Fierstein
• Profession: Lawyer on the team of litigators from the prestigious patent law firm of Fish & Neave
• Pages: 251-263

251

CHAPTER 13

EARLY SKIRMISHES

IN DISCOVERY

As the discovery phase of the lawsuit got into full tilt, the substantive strat-

egies of both sides gradually began to emerge. The Polaroid legal team

largely directed its efforts to highlight the big picture, what Schwartz

referred to as the “Kodak Story”: Kodak’s early relationship as a mentor

and supplier to Polaroid; Kodak’s admiration of Polaroid’s technological

advances, but its perception that the field of instant photography was only

a specialty market and no threat to Kodak’s dominance of the amateur pho-

tography industry; Kodak’s growing interest in instant photography as the

market expanded and as Polaroid’s innovations continued to emerge; and

eventually, Kodak’s realization that Polaroid might pose a genuine threat to

its core business when its integral SX-70 system came out. Polaroid coun-

sel sought to demonstrate that Kodak had made significant changes in its

research program, particularly upon the release of the SX-70 system—and

that it made those changes without regard to Polaroid’s patent property.

Kodak had run into some of the same obstacles that Polaroid encountered

and ended up having to adopt Polaroid’s patented solutions, an argument

clearly supporting the substance of the inventions (and patents) in question.

Schwartz’s approach was to put all of the obligatory technical evidence and

arguments of the complex case into a common-sense narrative that a non-

technical judge would understand—and ultimately be persuaded by.

The Kodak legal team, on the other hand, pursued a strategy grounded

in the technical aspects of each of the inventions at issue, which they

claimed were nominal advances that did not rise to the level of patentable

inventions. This would require conducting discovery on decades of Polaroid

laboratory records and experimental results, versions of engineering models

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