Kodak's Defense

• Author: Ronald K. Fierstein
• Profession: Lawyer on the team of litigators from the prestigious patent law firm of Fish & Neave
• Pages: 403-420

403

CHAPTER 23

KODAK’S DEFENSE

With Polaroid’s presentation complete, Judge Zobel turned to Frank Carr

to begin Kodak’s case. “The first order of business of course, your Honor,

is our filing of Rule 41 motions,” said Carr, announcing that Kodak had

five of them, each directed to a different Polaroid patent.1 Interestingly,

all three of Land’s patents were included in the group. Given that Kodak

was seeking to eliminate them from the case on the ground that Polaroid

had not established its right to relief during its direct case, the motions

were, at least in part, capable of being construed as a direct swipe at the

adequacy and effectiveness of Land’s testimony. In addition, Kodak chal-

lenged two of the camera patents, those covering the gear train and the

detachable spread roller housing. For whatever reason, Howard Rogers’

patents were not included.

Actually, it was hard to say what Kodak’s strategy was, given the long

odds against its success on the motions. Were the motions just another

personal tweak of Polaroid’s patriarch? Perhaps. More likely, they were

simply another wave in Kodak’s cumulative effort to erode the strength

of Polaroid’s patents by giving the judge repeated opportunities to focus

on Kodak’s arguments against them. Judge Zobel set a schedule to handle

the motions while the trial continued. Polaroid was given nine days to

respond in writing, and then oral argument was set for December 23, just

prior to the Christmas and New Year holidays.

Kodak’s Rule 41 motion papers set out its now familiar arguments. It

contended that PR-10 film did not infringe Land’s L-Coat patent because its

polymeric acid layer was not coated on the same support as the rest of the

photosensitive layers and thus not located within the “photosensitive ele-

ment” of the film unit, as required by the patent.2 Similarly, and somewhat

surprisingly, Kodak’s attack on Land’s Symmetrical Support patent was

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A Triumph of Genius

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based solely on a very technical noninfringement argument. Neither motion

put forth Kodak’s main contentions that the patents were invalid because

the inventions claimed were previously known or were obvious and thus

did not rise to the level required for patentability.3 Such was not the case

regarding Land’s Rear Pick patent. Here, Kodak did not, at least at this

point, contest infringement. Instead, it argued only that the patent should

be declared invalid because “the evidence adduced during Polaroid’s main

case allows only one conclusion, that the ‘invention’ of the . . . [Rear Pick]

patent would have been obvious to a person of ordinary skill in the art of

camera design at the time it was made.”4 On the other patents, Kodak con-

tended that Polaroid had failed to prove infringement with respect to the

Gear Train patent, and maintained that the Detachable Spread Housing pat-

ent was neither valid nor infringed.5

When Polaroid filed its papers in opposition the following week,

its basic position was that it had indeed discharged its burden of proof

and demonstrated its right to relief. It asserted: “Kodak’s motions either

ignore or contradict the [trial] record, are unsupported by evidence or

the law, and should be denied in all respects.”6 The Polaroid brief went

on to reiterate the legal principles Kerr had set forth in his earlier letter

on the subject—that successful motions to dismiss in patent cases were

extremely rare and “should be granted only in clear cases.” Although

Polaroid put forth its position in great detail, the tone was clearly one

of disdain for what it obviously believed was Kodak’s audacious attempt

to short-circuit the full trial on the merits that the parties were already

almost halfway through. Yet, given the judge’s off-hand comments a few

weeks earlier that she had “problems” with one or more patents, Polaroid

could not afford to treat Kodak’s motions lightly. The briefs were filed on

schedule, and with the matter submitted to Judge Zobel for her to consider

over the holiday break, Kodak returned to the task at hand of presenting

its defense.

Kodak’s first witness was Leo Thomas, its current director of research.

Thomas was not presented as an expert witness to opine on the Polaroid

patents in suit but as a fact witness who could describe generally the devel-

opmental project that went on at Kodak and led to the introduction of its

instant photography camera and film system in April 1976. Responding to

Carr’s direct examination, Thomas recalled how in late 1968 and early 1969,

Kodak embarked on a program known as “PL-976 . . . to put an instant

photographic product on the market.” He explained that the “‘PL’ was the

designation for laboratory project, and ‘976’ referred to the presumed or

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