Polaroid Corp. v. Eastman Kodak Co.

• Decision Date: 11 October 1986
• Docket Number: Civ. A. No. 76-1634-Z.
• Citation: Polaroid Corp. v. Eastman Kodak Co., 641 F.Supp. 828, 228 USPQ 305 (D. Mass. 1986)
• Court: U.S. District Court — District of Massachusetts
• Parties: POLAROID CORPORATION v. EASTMAN KODAK COMPANY.

641 F. Supp. 828

POLAROID CORPORATION v.EASTMAN KODAK COMPANY.

Civ. A. No. 76-1634-Z.

United States District Court, D. Massachusetts.

September 13, 1985.

Judgment October 11, 1986.

William J. Cheeseman, Laurence S. Fordham, Foley, Hoag & Eliot, Boston, Mass., Herbert F. Schwartz, Fish & Neave, New York City, for plaintiff.

Robert S. Frank, John M. Hall, Choate, Hall & Stewart, Boston, Mass., Francis T. Carr, Kenneth E. Madesen, William J. Ungvarsky, Paul Lempel, Robert D. Fier, James Galbraith, Walther E. Hanley, Allen E. Rubenstein, Lynne Darcy, Kenyon & Kenyon, New York City, Kenyon & Kenyon, Boston, Mass., Gerald E. Battist, Eastman Kodak Co., Rochester, N.Y., for defendant.

MEMORANDUM OF DECISION

ZOBEL, District Judge.

Polaroid Corporation, the assignee of numerous patents in the field of instant photography, brought this action against Eastman Kodak Company for infringement of twelve of its patents relating to the art/technology of both film and camera.Kodak denied infringement and alleged that all of the patents are invalid or unenforceable or both.

One of the film patents, U.S. PatentNo. 3,761,269, this Court, on Kodak's motion for summary judgment, held invalid as obvious within the meaning of 35 U.S.C. § 103.The parties waived their claims of infringement and invalidity with respect to a second patent, U.S. PatentNo. 3,757,657, alleged to have been infringed by certain features of Kodak's EK-4 camera.Trial proceeded with respect to the remaining ten patents¹ on the issues of liability and infringement, on one hand, and invalidity and/or unenforceability on the other.This memorandum shall constitute my findings of fact and conclusions of law as to those issues.²

I.Background.

In conventional photography, as opposed to instant photography, a picture begins as a sheet of plastic or paper coated with a thin layer of gel which has in it a suspension of microscopic crystals of silver halide.When that coating is exposed through the lens of the camera, the silver halide grains are modified to form an invisible image— the latent image.Exactly how the latent image is formed is apparently still subject to debate, but it involves the transformation of the silver halide into concentrations of minute, reduced silver particles depending upon the intensity of light on various portions of the film.

To make the latent image visible, the film is placed into a developer—a reducing agent.The developer delivers electrons to the concentration of silver halide grains that form the latent image and further transforms them into metallic silver.Because the developer will continue to deliver electrons to the silver halide, ultimately reducing all to silver, the process must be stopped after a period of time when the latent image has become optimally visible.This is accomplished by briefly immersing the film in a dilutable acid bath.Because exposure of the film to light would wipe out the latent image, developing must be accomplished in a dark room.

Following development, the film is put into a solvent for silver halide—hypo— which converts the remaining silver halide crystals into soluble silver salts and removes them by dissolving them.Since all of these chemicals would in time adversely affect the quality of the image, the film finally is thoroughly washed in water and dried, leaving a permanent negative image.

The negative image is formed where light converted the silver halide into metallic silver, which is seen as black.The more light reaches a particular area, the denser the concentration of silver and the darker the image in that area.The brightnesses on the negative are thus totally reversed.To produce a positive, the process just described is repeated.The negative is projected onto sensitive paper carrying a silver halide emulsion either through an enlarger or by pressing the negative directly against the positive.The positive is then processed in essentially the same manner as was the original film.

Edwin H. Land, the founder of Polaroid and the inventor of numerous patents, including several of those in suit, began work on what he came to call "one-step photography" in 1944.In 1947, he first introduced his version of the diffusion-transfer process by which the negative and positive were produced simultaneously.The film which will become the negative was exposed in the same manner as in conventional photography.The steps thereafter differed radically from those described above.The negative is brought into juxtaposition with a positive sheet within the camera and a viscous reagent contained in a sealed pod on one of the sheets is spread between them by means of two rollers.The positive and negative, which are symmetrical, are developed at the same time.After a defined period of time, the sandwich, positive and negative with reagent in-between, is pulled out of the camera and peeled apart.The camera also serves as the darkroom.Later, in the SX-70 system, the sandwich itself becomes the dark room.

One-step photography, as first marketed in December 1948, produced a sepia colored photograph.That was replaced by black and white peel-apart film in the early 1950s.At the same time that these sepia and black and white films and cameras were being developed and improved, Land and his associates addressed the problem of instant color photography.

Color photography requires three negative layers, each sensitive to a different primary color—blue, green or red.Complimentary dye layers—yellow, magenta and cyan, the subtractive colors positioned between the sensitive layers—absorb the primary color to be recorded on each sensitive layer.Thus, the blue sensitive layer controls the yellow dye layer next to it, which absorbs blue light; magenta absorbs green; and cyan, red.The dye layers are therefore sometimes called minus blue, minus green, and minus red.In conventional color photography, each sensitive layer contains a "coupler" and the dye layer a "color developer" which, by a reduction-oxidation process, will join together and form a dye.After exposure, the color developer is oxidized—it gives up electrons to the sensitive layer where the latter has been catalyzed by light.The silver halide layer is reduced—it gains electrons, enabling the color developer and silver halide to join.Each color uses a different coupler and the coupling process takes place within each layer.There is no transfer to different layers.Moreover, the reaction time of each coupler is different.Instant photography relies on a diffusion transfer process in which the reagents that form the negative image at the same time operate to form the positive.Coupler chemistry did not easily adapt to diffusion transfer.

At Dr. Land's direction, Howard G. Rogers, starting in 1947, began work on the problem of instant color film.The solution he evolved discarded couplers and relied instead on dye developers, a combination of preformed dye and developer, and led eventually to one of the patents in suit, U.S. PatentNo. 3,245,789.By 1957, Polaroid had made a prototype of the first one-step color photograph, and in 1963 it introduced instant color to the market under the name Polacolor, a peel-apart product.

Further work on both film and camera led to the introduction of the SX-70 system in 1972, described by Dr. Land as "absolute one-step photography."It is an elegant, highly sophisticated camera and film system.The photographic unit, which is ejected from the camera immediately after exposure, develops into a visible image in daylight and requires no peeling.The camera designed for the particular needs of this film unit contains a motor, gear train, and pick which, working together, operate to eject the film unit.The photographer needs to do nothing but focus the camera and expose the film to obtain a finished print.

Except for the '789 dye developer patent mentioned above and the 165/262 opacifying layer patents to Rogers, all of the patents in suit pertain to innovations incorporated into the SX-70 system.

From the early 1950s, Kodak had supplied Polaroid's needs for negative material.After Polaroid's development of the one-step color photograph, the parties, in December 1957, entered into an agreement pursuant to which Polaroid disclosed to Kodak certain of its color technology, including Rogers' concept of dye developers, and Kodak cooperated with Polaroid to develop and produce negative material adapted to this technology.Kodak then continued to supply Polaroid's requirements for negative material and the parties periodically met to discuss their research activities.About 1963, the research meetings terminated, although Polaroid continued to work on refinements and improvements in color and continued to inform Kodak of its progress from time to time.In April 1968, Polaroid advised Kodak of a radically new film, which would ultimately become the SX-70, and in October of that year, Dr. Land showed Henry C. Yutzy, Kodak's vice president of research, photographs made with the new method.The parties discussed a licensing and continuing supply arrangement, without coming to any resolution.In April 1969, Kodak notified Polaroid of its intention to terminate the 1957 agreement.

In early 1969, Kodak also launched its project PL-976—an effort to put an instant product on the market by 1976.The object was to produce a high quality color print in the camera which preferably would not require peeling and to do so without the assistance of existing patents.PL-976, then optimistically redesignated PL-974 (moving back to 1974 the projected market date) investigated a variety of photographic chemistries.During 1970, groups at Kodak outside the research laboratory became more interested and the project was once again renamed and restructured.Project P-129 was begun to develop an instant color film similar to Polacolor and compatible with Polaroid cameras.P-130 was to produce an integrated system—Kodak...