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Orrick Successfully Defends Canon in Patent Infringement Suit Brought by Multimedia Patent Trust

11-12-2012

Orrick achieved a successful outcome for Canon in a patent infringement suit brought by Multimedia Patent Trust (MPT), an entity established by Alcatel-Lucent (ALU),  involving Canon’s camcorders and video capable digital cameras. After a two-year battle, on November 9, Judge Huff of the San Diego Federal Court granted Orrick’s motion for summary judgment of non-infringement.

Orrick argued that patent exhaustion applied in this case since ALU had granted Canon’s supplier, Fujitsu, a worldwide license. MPT stated that under the Jazz Photo line of cases, Canon could not rely on the Fujitsu license to immunize Canon’s U.S. sales because Canon had purchased the Fujitsu chips in Japan.

The Court distinguished the Canon situation from that in the Jazz Photo cases because Canon’s supplier had a worldwide license from the patentee. The Court held that even though Canon bought the accused Fujitsu components in Japan, Canon’s subsequent importation of products, which incorporated the components in the U.S., was not an infringement. The Court stated that as a result of the worldwide license, Fujitsu’s sale of accused chips to Canon in Japan was an authorized sale under the asserted U.S. patent and the doctrine of patent exhaustion applies to these sales. The case against Canon was set to go to trial on December 13, 2012. The Court’s decision disposes of the entire case against Canon.

The Orrick team was led by New York intellectual property partner Joseph A. Calvaruso and included New York intellectual property partner Richard Martinelli, Orange County intellectual property partner Mark Wine, Los Angeles intellectual property managing associate Alyssa Caridis, Los Angeles commercial litigation senior associate Seth Freilich, New York intellectual property managing associates Nicholas Lam and Ryan Micallef, and Orange County intellectual property managing associate Glen Liu.

About Orrick

Orrick is a global law firm with a particular focus on serving companies in the technology, energy and financial sectors. Founded in San Francisco and celebrating its 150th anniversary in 2013, Orrick is recognized by Law360 as one of the “Global 20” leading firms. The firm offers clients a distinctive combination of local insight and consistent global quality across 25 offices. Orrick’s lawyers are known for delivering commercially oriented advice on sophisticated transactions and have an extraordinary record of wins in high-stakes disputes. Chambers Global cites Orrick for leadership across 39 practice areas and recognizes 86 Orrick lawyers worldwide as leading practitioners.  Selected by Financial Times among the top-five most innovative U.S. law firms, Orrick was the only one of the five firms cited for innovation in both legal advice and the business of law.  Collaboration – one of the firm’s core values – defines the firm's relationships with its clients, among its lawyers and staff, and with its communities.

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