The Long, Slow Road to the Courthouse

• Author: Ronald K. Fierstein
• Profession: Lawyer on the team of litigators from the prestigious patent law firm of Fish & Neave
• Pages: 303-318

303

CHAPT ER 17

THE LONG, SLOW ROAD TO

THE COURTHOUSE

With the turn of the calendar to 1980, discovery accelerated to a furious

and tenacious pace. Depositions went on virtually every week on both

sides, with Kodak continuing to take advantage of the Special Master’s

liberal rulings to force Polaroid witnesses to review massive amounts of

material. At this point, Kerr, who was approaching retirement, began to

distance himself from the process, leaving Schwartz, who had largely set

the original strategy, to fight this battle of attrition.

By this time, both parties had responded to hundreds of interrogato-

ries, most with numerous subparts, and had produced hundreds of thou-

sands of pages of documents to each other, with the aid of a small army of

supporting lawyers and paralegals. This mass of material had been copied

multiple times, cataloged chronologically, and organized into sets corre-

lated to the patents in suit, to discovery requests, and to depositions in

which they had been used as exhibits. The deposition testimony itself was

similarly broken down, digested, and cataloged for easy access, if neces-

sary. In these days before computers were in mainstream use, all of this

work was done by hand, producing voluminous amounts of paper in a

tremendously time-consuming and costly operation.

Kodak continued to drag things out to step up the economic pres-

sure on Polaroid, while Polaroid met every Kodak demand with one of its

own. Ultimately, motions filed by both contestants kept the Special Mas-

ter busy reading submissions and writing rulings to keep the process mov-

ing. Yet, he was the one who had opened the floodgates—and kept them

open. In his defense, the Special Master asserted that this was a litigation

involving “twelve critical Polaroid patents” and thus “extensive discovery

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A Triumph of Genius

304

within the bounds of reason and judicial discretion is necessary for both

parties to adequately prepare for trial.”1 Unfortunately, he did nothing to

put on the brakes and exercise any judicial discretion.

In one significant incident, Schwartz called Kodak’s bluff when it

attempted to hinder the production of detailed laboratory notebooks relat-

ing to its research and development activities by making the task too

onerous. After some foot-dragging, Kodak allowed one of Schwartz’s

associates to come to Rochester in early February 1980 to review the

material in situ.2 When he appeared at Kodak Park, the Polaroid lawyer

was told Kodak was producing a collection of 2,300 notebooks but that

he was only being shown two rolling bookcases containing a small por-

tion of them. Kodak obviously intended to bog down the review so that

Polaroid’s lawyer would give up the search. When the young lawyer sug-

gested that he survey the entire collection first so as to select a relatively

small number that he would review in detail thereafter, Kodak abruptly

terminated the search and sent the lawyer packing.3

Schwartz concluded that Kodak shut the process down in order to buy

time to rethink its position. But Kodak’s counsel had agreed to produce

this material. Accordingly, after the usual niggling back and forth, the

inspection was recommenced two weeks later and, ultimately, resulted in

a demand that Kodak produce selected pages from 225 of the 2,300 note-

books.4 Among those pages were some of the most important documents

that Polaroid was to secure from Kodak throughout the discovery phase

leading to trial.

As always, Polaroid’s urgent and overriding imperative was to get

this case to trial. It needed the judge to move expeditiously—but had no

power to compel him to do so even as the case neared its fourth anni-

versary. There were motions still pending from the very beginning of the

action relating to, among other things, Kodak’s patent misuse defense cov-

ering Polaroid’s entire patent portfolio and Polaroid’s attempt to dismiss

it. In addition, Kodak’s crucial summary judgment motion on the Rogers

“Excedrin” film unit patents, a motion that had the potential to blow Pola-

roid’s case apart, was also fully briefed and suffering judicial inaction.

These matters required the judge’s attention, but only the judge could take

the initiative to deal with them. None of the three judges who had pre-

sided over the case since its inception had shown the slightest inclination

to take control of the litigation and to deal with these matters. Neither had

any of them shown any inclination to put the case on some reasonable

schedule aimed at moving it towards trial and a final resolution.

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