Kodak's View

• Author: Ronald K. Fierstein
• Profession: Lawyer on the team of litigators from the prestigious patent law firm of Fish & Neave
• Pages: 219-234

219

CHAPTER 11

KODAK’S VIEW

On the very same day in April 1976 as Land was rallying the troops at Pola-

roid’s shareholders meeting, Kodak’s shareholders were gathered in Flem-

ington, New Jersey, for their annual meeting. There was no way to avoid

the news of the Polaroid lawsuit that had been filed the day before. From

its Rochester headquarters, Kodak had immediately issued a straightfor-

ward denial: “Kodak’s instant cameras and film are based on our own dis-

tinctive technology and don’t depend on the patents of others. . . . Kodak

has made an extensive study of patent literature in the instant photography

field . . . and we are prepared to defend [our] position.”1

At the annual meeting, Walter Fallon tried to ignore the legal threat

and focused instead on delivering a very bullish forecast for the busi-

ness prospects of Kodak’s new instant photography system, reporting that

interest from dealers in the trade was “at a high and very positive pitch.”2

However, later in the day, at a lunch held for security analysts, he was

unable to avoid the subject of Polaroid’s attack. Here he was more defen-

sive, issued a “frosty denial of the charges,” and perhaps even provided

an advance glimpse of Kodak’s legal strategy. “We still believe our patent

position is sound. . . . We don’t knowingly infringe anybody else’s valid

patents,” Fallon declared (emphasis added).3

As previously mentioned, when faced with a charge of patent

infringement—that is, the unauthorized use of an invention covered

by a patent—the accused has two basic defenses, noninfringement and

invalidity. It was likely that Kodak had already concluded that it might

face great difficulty in prevailing on a noninfringement defense for most

of the patents asserted against it. That defense would be based on an

argument that its cameras or film did not use the invention of any par-

ticular Polaroid patent. Polaroid’s patents had been studied thoroughly,

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A Triumph of Genius

220

and Kodak knew the scope of the inventions that they covered. Since

Kodak also knew exactly what was included in its products, it was in an

excellent position to make a very accurate assessment about whether its

products fell within the scope of Polaroid’s patents. Given that Kerr and

Schwartz had been adamant about asserting only patents that were liter-

ally infringed by Kodak’s products, the collection in the lawsuit would

be tough to defeat on that score. Kodak had to know that. Although

Kodak might assert noninfringement as an alternative argument on one

or more specific patents, it was not likely to be its key defense on most.

Instead, its central strategy in the case seemed sure to be an attack on

the validity of each patent asserted against it. One can only assume that

Fallon had this clearly in mind.

In fact, Fallon made his pronouncement armed with the knowledge

that his patent counsel had assured Kodak that Polaroid’s patents were,

in fact, vulnerable on this basis. For eight years leading up to its product

launch, Kodak had conducted a comprehensive study of Polaroid’s pat-

ents and had collected a series of legal opinions stating that the key pat-

ents standing in the way of Kodak’s entry to the field were flawed.4 The

study included a review of between 200 and 250 Polaroid patents and had

resulted in written opinions that sixty-seven key Polaroid patents were

either invalid or, if valid, would not be infringed by Kodak’s proposed

instant photography system.5 Kodak’s longtime outside patent counsel,

the New York City law firm of Kenyon & Kenyon Reilly Carr & Chapin,

issued these opinions.

The Kenyon firm, an historic Wall Street intellectual property institu-

tion with its roots in the late nineteenth century development of the elec-

tric power and light industries, was truly the downtown counterpart to

Fish & Neave. It had started its practice in 1879 as Browne & Witter. The

first Kenyon joined shortly thereafter, and there was at least one Kenyon

in the firm thereafter until December 31, 1978, when Houston Kenyon

retired.6 During the years surrounding the turn of the twentieth century,

the firm litigated the validity of many pioneer patents covering inventions

that made possible an America powered by electricity and gasoline. These

included work done by Charles Brush on the arc light and the recharge-

able battery, Charles Van DePoele on the trailing trolley pole that brought

electric power down from overhead wires, Nicola Tesla on a motor that

ran on alternating current, and others.7 Kenyon & Kenyon, which adopted

this simplified name in 1979, had been a force in the law of technology

ever since.

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