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$________ Intellectual property - Patent infringement - Patent validity - Owner of digital camera technology patents contends that defendant Fuji infringed on its patents - Defendant contended that patents were invalid. p 7 3

United States District Court, District of Delaware

This was another trial involving the same allegations as alleged in the article reported in the commentary section involving Canon, U.S.A. In this trial, the plaintiff alleged that the various manufacturers of digital cameras violated the plaintiff’s patents regarding digital camera technology. As a result, the plaintiff brought suit for patent infringement against these manufacturers. The defendant denied the infringement and refused to settle the claims prior to trial.

Plaintiff St. Clair is an intellectual property consulting firm that owns four U.S. patents on digital camera technology. In February ________, a jury in St. Clair Intellectual Property Consultants, Inc. vs. Sony Corp. et al., Civil Action No. 01-________- JJF (D. Del. ________), found that Sony’s digital cameras and camcorders infringed all four of St. Clair’s patents. The jury further awarded St. Clair $25 million in damages. Following the jury verdict, Sony agreed to acquire a license under the patents.

On February 28, ________, St. Clair filed its Complaint against Canon, Fuji, Olympus, Nikon, Minolta, Kyocera, Casio and Seiko- Epson again in the District of Delaware. Olympus, Nikon, Minolta, Kyocera, Casio and Seiko-Epson eventually settled and took licenses to St. Clair’s patents. Canon and Fuji did not settle and St. Clair went to trial against the defendant Fuji on October 13, ________.

St. Clair contended that Fuji imports, manufactures, uses, offers to sell, and sells digital cameras in the United States, and in doing so, infringes, induces infringement, and contributes to infringement of the asserted claims of four patents. St. Clair contended that 43 Fuji digital cameras meet the elements of the asserted claims, and therefore, Fuji’s importing, manufacturing, using, offering to sell, and selling these cameras in the United States directly infringes St. Clair’s patents. St. Clair also contended that Fuji failed to rebut the presumption that the patents-in-suit are valid and that the patents are unenforceable.

Fuji, the defendant, denied that its digital cameras infringe any of the asserted claims of the patents-in-suit. Fuji contended that they were not liable for direct infringement, inducing infringement, or contributory infringement. Finally, Fuji contended that the patents-in-suit were invalid and unenforceable.

The trial court precluded the plaintiff from using any of the evidence of its former settlements and licenses for the patents with other manufacturers in any manner during this trial.

Consequently the barring of this evidence denied the plaintiff the ability to use this type of evidence to support its damages claim.

The trial lasted seven days and the jury deliberated for two days before returning its majority verdict in favor of the plaintiff and against the defendant, Fuji.

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