Wilmer Scores for Kodak in Ricoh Licensing Fight
A federal jury in Manhattan returned a verdict on Wednesday that Ricoh Company violated a patent licensing agreement with Eastman Kodak Company. The decision is worth $24 million to Kodak, bringing its total recovery in the case to $75.8 million. Wilmer Cutler Pickering Hale and Dorr prevailed at trial over a team from Quinn Emanuel Urquhart & Sullivan.
Kodak granted Ricoh a license in 2002 to make digital cameras using Kodak's patented technology. Under the terms of the deal, Kodak was entitled to royalty payments from Ricoh on its camera sales.
In 2011 Ricoh acquired the camera brand Pentax from Hoya Corp. Ricoh refused to pay royalties on the Pentax-branded cameras, claiming that it had inherited a separate "implied license" to Kodak's patents. According to Ricoh, that implied license emerged out of meetings between Kodak and Pentax executives in the mid-2000s, back when Pentax was an actual company and not just a brand name.
Kodak's lawyers at Wilmer didn't buy that argument and sued for breach of contract in April 2012. The case was assigned to U.S. District Judge Denise Cote in Manhattan. Ricoh originally tapped Morrison & Foerster for its defense, but swapped it for Quinn Emanuel in July.
In an Aug. 9 summary judgment ruling, Cote found that Ricoh's sale of Pentax-branded "point and shoot" cameras violated the patent licensing agreement with Kodak. The parties eventually stipulated that Ricoh should pay $53 million in damages. The only issue left in the case was whether a separate category of Ricoh's cameras, known as digital single lens reflex cameras, also fell within the scope of the patent agreement. If Kodak prevailed on the issue, Ricoh agreed to pay an additional $22.8 million in damages.
Cote held a two-day jury trial on that issue this week. Wilmer partner Michael Summersgill made the case for Kodak, along with Robert Gunther Jr. and Jordan Hirsch. Quinn partner Christopher Tayback handled openings and closing for Ricoh.
Kodak is undoubtedly grateful for Wednesday's quick verdict and the $76 million haul, seeing as it exited bankruptcy just last month. "Kodak's a great client to work with," Summersgill told us in an interview. "It's nice to get this ruling for them, following what they've been through over the last months."
Quinn's Tayback was not immediately available for comment.