Judge Denise Cote
Kodak owns more than 1,000 patents for digital camera technology. Taiwan’s Asia Optical (AO) assembles cameras sold under other firms’ brand names. Under an April 2004 patent license agreement (PLA) Kodak licensed its so-called ’107 Patent, and others, to AO in exchange for promised royalties. Section Five of their separate side letter (§5) stated that “[p]ure contract assembly without design responsibility, or simple provision of parts does not obligate [AO] to pay a royalty.” Fujifilm (Fuji) was not listed as a Kodak licensee. Under an April 1995 non-royalty-bearing agreement Kodak granted Fuji a license to the ’107 Patent. In 2005 AO began making digital cameras as an original equipment manufacturer (OEM) for Fuji. It made no royalty payments to Kodak based on its OEM camera sales to Fuji. Reading the integrated PLA and side letter as a whole the court granted Kodak partial judgment as to AO’s duty to pay Kodak royalties on its sales to Fuji. Fuji was not a Kodak licensee for §5 purposes. Because the 1995 agreement with Fuji licensed only two of Kodak’s digital camera patents Fuji was not a licensee of Kodak’s “Digital Camera Portfolio” under any reasonable meaning of that term as used in the context of the 2004 PLA.
