November.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 associate Nicholas Lam and Orange County intellectual property managing associate Glen Liu.