Imaging patent holder that won against Sony, Canon sues Apple

[AppleInsider]

An Michigan company that has been awarded millions of dollars in various lawsuits against major electronics corporations has now taken aim at Apple.

St. Clair Intellectual Property Consultants, a Grosse Point, Mich., company, has alleged that Apple is in violation of four digital imaging related patents owned by the company. Awarded from 1992 to 2001, they are U.S. Patent Nos. 5,138,459 ("Electronic Still Video Camera with Direct Personal Computer (PC) Compatible Digital Format Output"); 6,094,219 ("Electronic Still Video Camera with Direct Personal Computer (PC) Compatible Digital Format Output"); 6,233,010 ("Electronic Still Video Camera with Direct Personal Computer (PC) Compatible Digital Format Output"); and 6,323,899 ("Process for Use in Electronic Camera").

"Apple has made, offered to sell, imported, used and/or sold in this judicial district and elsewhere in the United States, digital cameras that directly, contributorily, or by inducement infringe one or more of the patents-in-suit," the complaint alleges.

The company states that in 2003 it was awarded $25 million in a lawsuit against Sony Electronics and Sony Corporation of America regarding the same patents. In 2004, a jury awarded $34.7 million to St. Clair in its complaint against Canon USA. A separate 2004 suit against Fuji resulted in an award of $3 million in damages over the patents in question.

Other suits were filed against a variety of companies, including Nokia, Hewlett-Packard, Kodak, Verizon, Motorola, Sanyo, Research in Motion, to name a handful. In many of the complaints, including ones where damages were awarded, the defendants reportedly opted to enter into licensing agreements with St. Clair.

The complaint against Apple, the only named defendant in the suit, was filed Monday in a U.S. District Court in Delaware. St. Clair has alleged that it is entitled to damages for what it believes is Apple's violation of its four owned patents.

"The infringement by Apple of the patents-insuit has injured St. Clair and will cause St. Clair added irreparable injury and damage in the future unless Apple is enjoined from the infringing patents-in-suit," the complaint states.

The suit does not specify which hardware is believed to be in violation of the patents, whether it be iSight cameras on Macs, the point-and-shoot capabilities on the iPhone, or the video camera recently added to the iPod nano.

In its annual Form 10-K filing with the U.S. Securities and Exchange Commission for the fiscal year 2009, Apple stated it is currently defending itself from more than 47 patent infringement cases. Twenty-seven of those were filed during the 2009 fiscal year.

"Regardless of merit," Apple said, "responding to such claims can consume significant time and expense."

[ View this article at AppleInsider.com ]

[ruel24]

Since the camera's are sourced elsewhere, and not designed or manufactured by Apple, how can this have merit? It's like as if Apple used Nikon cameras and they sue Apple instead of Nikon. This is ridiculous.

[teckstud]

should be

Is there a lawsuit for that?

EEeeekkkkkKKK!

[teckstud]

Delaware- not good.
Michigan- needs money.
Regardless - this is getting out of control. It's like one a week! Sounds like these guys have built up a list of victims.

[manfrommars]

My question is this:

Are there companies out there who build nothing but simply patent ideas, knowing that eventually other companies will develop similar ideas, build them and become potential lawsuit targets?

I don't know anything about patents, but this company - http://stclairipc.com/ - doesn't seem to make a single thing??

Is this like those web companies that buy up domain names and then resell them for absurd profits when a legit company actually needs one?

Or is St Claire legit and is Apple just sloppy?

[RoboNerd]

This county must do something about worthless, over-broad language patents and the parasite companies that buy them up, produce absolutely nothing, but then want millions in "licensing fees". We're setting ourselves up as a has-been nation where nobody will want to actually take the time to innovate new products lest they be sued for infringing on that patent for "a device that does something somewhere regarding digital information manipulation for the purpose of user experience enhancement".

Give me a break.

Patents need to be far more difficult to get, IMHO, and software shouldn't be patentable at all.

[jimhill]

Originally Posted by manfrommars

My question is this:

Are there companies out there who build nothing but simply patent ideas, knowing that eventually other companies will develop similar ideas, build them and become potential lawsuit targets?

Yes. And this is one of them.

[teckstud]

Originally Posted by RoboNerd

This county must do something about worthless, over-broad language patents and the parasite companies that buy them up, produce absolutely nothing, but then want millions in "licensing fees". We're setting ourselves up as a has-been nation where nobody will want to actually take the time to innovate new products lest they be sued for infringing on that patent for "a device that does something somewhere regarding digital information manipulation for the purpose of user experience enhancement".

Are you talking about "Change you can believe in"? It's looking more chump each passing day.

[Dueces]

(edit: Please don't feed the troll)

Originally Posted by manfrommars

My question is this:

Are there companies out there who build nothing but simply patent ideas, knowing that eventually other companies will develop similar ideas, build them and become potential lawsuit targets?

Yes have you ever heard of a company called Apple?

Oh the irony of irony. If this was the other way around the fanboys would be screaming bloody murder, now the same koolaid drinkers will be screaming its soooooooo unfair.

[TBell]

Apple doesn't build anything? Interesting.

Originally Posted by Dueces

Yes have you ever heard of a company called Apple?

Oh the irony of irony. If this was the other way around the fanboys would be screaming bloody murder, now the same koolaid drinkers will be screaming its soooooooo unfair.

[c4rlob]

...See below

[c4rlob]

I swear, people just patent everything they see in Star Trek episodes regardless of whether or not they actually manufacture any of it. I guarantee there's someone out there right now with a patent for converting biological signals into digital signals using an atomic and nucleic buffer for the purpose of an operator transmitting the data to a remote location.

I wonder if they go after companies like Apple and Sony with American offices, because the law doesn't permit them to sue the current camera suppliers that are from China? In the case of the first patent, it seems to be a patent from a now non-existent company who could've easily been a supplier for IBM and Apple in the old days (even though I don't recall any computer video cameras back in 1992). Yet it's beyond me how our country lets vulture consultant firms claim such critical patents just from buying them. Patents should be tied to a requirement of production!

[mrstep]

Looking at: 5,138,459

So... let's see... I think if you have a digital camera and have it convert from the CCD through a memory buffer of some sort and then let users maybe select what format to save that in... yep, seems good enough for a patent to me. It has 'extensions' on the base of things like 'the file could be marked with information about what kind of compression was used'. Duh, really, you mean like having a file format!?

What a f(*&#%(*$&ing broken system. On top of which, it looks like that one was filed in 1990 and, if I'm reading correctly, granted in 1992(?), in which case it expired in August - or are they now granting patents as nicely as copyrights which can last 1000 years?

Just allowing it is ludicrous... So I have this idea, take a bunch of lawyers, put them into a large blender, set up a website where users can view them and control the power settings of the blender. BAM! A patent AND entertainment!

[mrstep]

Originally Posted by c4rlob

I swear, these people basically patented everything they saw in Star Trek episodes regardless of whether or not they could manufacture any of it. I guarantee there's someone out there right now with a patent for converting biological signals into digital signals using an atomic and nucleic buffer for the purpose of an operator transmitting the data to a remote location.

No doubt. The writers for that series should be rolling in dough now - wall-sized TV screens! Communicators! Talking computers! Matter-antimatter reactors! Green-skinned babes! (Given the bio-tech patents they allow, I'm pretty sure that should be good enough too.) And the list goes on.

[elroth]

Originally Posted by Dueces

Yes have you ever heard of a company called Apple?

Oh the irony of irony. If this was the other way around the fanboys would be screaming bloody murder, now the same koolaid drinkers will be screaming its soooooooo unfair.

But it's not the other way around. Apple doesn't routinely sue people for patent infringement. They did sue Microsoft over Windows 98 - that was hardly frivolous.

Copyright violations are different. Or is that something too hard for you to understand?

[David Steuber]

So Apple is doing well compared to this time ten years ago. People are noticing. Now they want to see if they can squeeze out some money from the fruit. Is that a correct reading of the situation?

Wouldn't the 1992 patent have expired by now?

The others all have the same title, but I didn't Google them to see what exactly they claim. So far as I know, all digital formats can be processed by a PC. Heck, digital imagery predates consumer digital cameras by at least a decade. The Viking and Voyager probes sent back digital imagery back in the 1970s that could be processed by PCs.

[c4rlob]

Originally Posted by Dueces

Yes have you ever heard of a company called Apple?

Oh the irony of irony. If this was the other way around the fanboys would be screaming bloody murder, now the same koolaid drinkers will be screaming its soooooooo unfair.

In response to:

Can you show one patent that Apple owns that is not directly tied to something they currently build or are dutifully contributing resources to building?

[JeffDM]

Originally Posted by manfrommars

My question is this:

Are there companies out there who build nothing but simply patent ideas, knowing that eventually other companies will develop similar ideas, build them and become potential lawsuit targets?

I don't know anything about patents, but this company - http://stclairipc.com/ - doesn't seem to make a single thing??

The colloquial term is patent troll.

[aga]

Originally Posted by RoboNerd

This county must do something about worthless, over-broad language patents and the parasite companies that buy them up, produce absolutely nothing, but then want millions in "licensing fees". We're setting ourselves up as a has-been nation where nobody will want to actually take the time to innovate new products lest they be sued for infringing on that patent for "a device that does something somewhere regarding digital information manipulation for the purpose of user experience enhancement".

Give me a break.

Patents need to be far more difficult to get, IMHO, and software shouldn't be patentable at all.

Laughing hard at this. The reason for getting a patent was to profit from your idea with out others stomping on your innovation. Then came the big companies who used patents to stomp out the little guys (and when their patents ran out, sometimes they would even get a ban on the product). Now come the patent pools that go after the big guys. I laugh, because Apple has played this game from every angle. The mouse, the GUI... one Click checkout...

agree, good reform would be a nice thing, given that in some cases, a guy changes one thing and calls it new, in another, it has one thing in common with the other and they call it the same. Those gray grey areas

[justflybob]

Originally Posted by AppleInsider

An Michigan...

Copy boy!

[aga]

Originally Posted by teckstud

Are you talking about "Change you can believe in"? It's looking more chump each passing day.

LOL, teckstud. I have no idea what you are saying (as I play with some change I just pulled out of my pocket pondering what "It is looking more chump each passing day." Looking more chump?). Then I read who wrote it. Teckstud. He must be a tech stud. No, it says teck instead of tech. Hmm. Then I see you must be in a red band. But looking closer it says banned in red. Hmmm. Well I'll be D!@#$ You are a Red Banned Teck Stud. Whatever that is.

Sounds like you might have bought a bad bag of today. May I recommend going for the Hemp seeds next time, as they are loaded in Omega 3s and Omega 6s, which might help you out a bit.

Cheers

[Quadra 610]

Alright everyone, take a number.

The line forms here. When your number is called please have your Statement of Claim ready, including amount of damages you are seeking. If you do not have a Statement of Claim please form a line over there and one will be provided.

[reifer]

In label copyright, companies have to sell some every year or they lose it?
Why is it possible for someone who has never made anything to have a claim and where exactly is the damage?
Patent practices in the US are ridiculous

[hill60]

I seem to recall in the early nineties images from the CCDs in a telescope being veiwed on Macintosh computers when I was doing an astronomy course, astronomy is the field of physics where the whole idea of using sensors for cameras instead of film and interpreting the results using computers came from.

I also recall viewing Landsat satellite images as well via the Internet on Macintosh computers as well.

I guess there's no such thing as "prior art".

[womble2k2]

There are both advantages and disadvantages of patents.

The main advantage of a patent, is to protect investment in R&D that a company engages in. If you are a large company spending millions per year on R&D, the last thing you want is for you to develop something that another company rips off and makes massive profit from whilst you struggle to get income to cover your costs of R&D. By protecting R&D investment, it encourages development on new ideas and products.

The main disadvantage is that they can be so vague that you could potentially patent every conceivable product solution and run a business, like these guys, that purely has an income from licensing and winning patent infringement cases. This discourages product development as a company can spend a lot of time just investigating whether an idea has been patented.

I believe that the number of patents now being filed has rocketed up in recent years http://upload.wikimedia.org/wikipedi..._1790-2008.png to a point where I do not believe they are thoroughly investigated for merit before being granted. If this is true, it really is harm businesses in the long run.

When a patent is granted, I would like to see filed alongside it all of the criteria and judgements that the patent office applied to each area. This would help any legal issues.

I also think the time limits of patents need to be reduced. They should be set an a level that would allow a company to make reasonable return on R&D investment yet not too long as to make filing infringements against what are now common products (e.g. digital camera's) being used to make massive profits. I am sure St Clair did not invest multi-millions on R&D to these patents!!

Phil

[widowsoft]

Surely the principle is award damages to those who show they are using their patents and therefore are truly being hurt its like me patenting the use of photo sensitive cells but not actually manufacturing them.
too many people are becoming rich on concept patents without any effort into design manufacture or enhancement.
It should stop

[JeffDM]

Originally Posted by womble2k2

The main disadvantage is that they can be so vague that you could potentially patent every conceivable product solution and run a business, like these guys, that purely has an income from licensing and winning patent infringement cases. This discourages product development as a company can spend a lot of time just investigating whether an idea has been patented.

The process of registering a patent is supposed to balance between too narrow (ineffective) and too broad (covering innovations that aren't yours), but it doesn't seem to work out that way enough.

Patents are more likely to be invalidated if it's too broad or too vague. But invalidating a patent is a long process, and patent lawsuits cost a lot of money.

It's hard to say how big of a problem it is, lots of patents get issued, I think we only hear about the gray areas and the travesties, not the slam-dunk valid ones.

Originally Posted by aga

I laugh, because Apple has played this game from every angle. The mouse, the GUI... one Click checkout...

There is probably a lot of depth to the examples you give, I don't recall reading about patent lawsuits here. What did Apple do about the mouse and GUI? I don't remember their involvement in the One Click checkout kerfluffle.

[fourthletter]

"An Michigan company that has been awarded millions of dollars in various lawsuits against major electronics corporations has now taken aim at Apple."

* A Michigan company

An precedes a word starting with a vowel