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A $40 million digital camera licensing deal between Ampex Corp. and Sony Corp. has provided some IP lawyers at Fish & Neave with a reason to grin. The recent agreement untangles at least one portion of a digital technology-related web of litigation that has ensnared Ampex, Sony and Eastman Kodak Co., according to Norman Beamer, a partner in Fish & Neave’s Palo Alto office. He and senior attorney Gabrielle Higgins represented Ampex, a company headquartered in nearby Redwood City that has taken legal action against Sony and other companies that it says are illegally using technology that it has licensed. The increasingly popular digital camera technology has generated several patent disputes in which Ampex has generally prevailed. “It’s been a successful run for Ampex in terms of licensing up some of the bigger patents out there in digital still cameras,” says Higgins. The deal with Sony came about after Ampex filed a claim against Sony with the International Trade Commission and a suit in Delaware federal court. “The case settled at the very earliest stage,” says Beamer. The $40 million licensing fee from Sony will cover its use of the Ampex technology through 2006. Ampex will receive royalties for subsequent use. While Ampex and Sony are no longer at odds, both companies remain enmeshed in other litigation over similar digital-related disputes. While Ampex hopes to work out a similar licensing arrangement as a way to end a suit against Kodak, Sony and Kodak are countersuing each other in separate litigation, says Beamer. While Beamer hopes other camera companies will agree to licensing agreements as a way to avoid litigation, he says his client is not afraid to sue. “They are a very active licensing company and they litigate when they have to,” he says. Justin Scheck is a reporter at The Recorder, where he writes about law firm.

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