Wilmer Beats Ricoh Bid to Undo Kodak Jury Win

Wilmer Beats Ricoh Bid to Undo Kodak Jury Win

Ricoh Company Ltd. and its lawyers at Quinn Emanuel Urquhart & Sullivan failed Thursday in their attempt to knock out a portion of the $75.8 million the company owes Eastman Kodak Company in a patent licensing dispute.

U.S. District Judge Denise Cote in Manhattan refused to vacate a jury’s verdict in October that Ricoh’s Pentax brand of digital single lens reflex (DSLR) cameras fall within the scope of its licensing agreement with Kodak. As we previously reported, that verdict was worth at least $22.8 million to Kodak.

Kodak and its lawyers at Wilmer Cutler Pickering Hale and Dorr sued for breach of contract in April 2012 after Ricoh acquired the Pentax brand. Ricoh had refused to pay royalties on the Pentax cameras, claiming it inherited a separate “implied license” to Kodak’s patents through the acquisition. According to Ricoh, the implied license came out of meetings between Kodak and Pentax executives back in the mid-2000s, when Pentax was an operating company and not just a brand name.

Judge Cote didn’t buy that argument and sided with Kodak and Wilmer on summary judgment in August, finding that Ricoh’s sale of Pentax-branded point and shoot cameras violated its existing agreement with Kodak. The companies stipulated that Ricoh should pay $53 million in damages for those cameras, but they still disagreed over whether DSLR cameras were subject to the language of the license, which applied to “self-contained” devices.

Cote oversaw a two-day jury trial in October on that issue. After about three hours of deliberations, the jury sided with Kodak, finding that Ricoh’s Pentax DSLR sales fell under the agreement. The verdict put Ricoh on the hook for another $22.8 million in damages.

Ricoh’s lawyers at Quinn filed a motion to vacate the verdict in January. They argued that Kodak’s own evidence established that a DSLR camera body is only complete when it’s attached to a lens, and in the Pentax DSLR kits, the body and lens were never attached when shipped. They maintained there was no evidence to support the jury’s verdict that the DSLR camera bodies were complete, self-contained devices.

Judge Cote appreciated that logic but nevertheless let the jury verdict stand. “While there is a formalistic appeal to this argument, the argument nevertheless fails because it was the jury’s task to evaluate the evidence, and the parties’ arguments from that evidence, and it rejected this very argument, which Ricoh made at trial,” Cote wrote in Thursday’s 12-page opinion. She found the jury’s determination was one of “substance over form” and that it was entirely appropriate given the evidence. “Ricoh may be unhappy with the jury’s choice, but that is an insufficient basis to set aside its verdict,” Cote wrote.

We reached out to Ricoh counsel Christopher Tayback of Quinn Emanuel for comment but didn’t immediately hear back. The firm replaced Morrison & Foerster on the case for Ricoh last July. Lawyers from Bingham McCutchen have recently appeared on the docket for Ricoh, but Bingham appellate chair David Salmons declined to comment on his firm’s role in the case.

Wilmer’s Michael Summersgill said Kodak was pleased with the decision. “The verdict was supported by substantial evidence and the judge’s order reflects that,” he said.

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