By Don Southerton, Korea Legal Editor
One common concern with doing global business is trade and patent infringement, which are complex and costly–to both defend and protect. This recent case involving Kodak, Samsung, and LG provides some insights into Korean business. First Kodak is vigilant in protecting its IP. Next, Samsung and LG eventually saw that settling the case was in their best interest and would open doors for cross-licensing technology. That said, LG settled first, while Samsung waited until the U.S International Trade Commission ruled against them.
In comparing Samsung and LG, I see shrewder brinkmanship on the part of Samsung. This is no surprise and points out the need to understand Korean business and their unique corporate cultures. (Samsung, LG, Hyundai-Kia, Lotte, Hyosung, Hanjin, SK, Doosan, etc–all differ).
A Brief Overview
Kodak Takes Action Against Samsung and LG For Patent Infringement
Kodak Asserts that Samsung and LG Camera Phones Infringe its Digital Camera Patents
ROCHESTER, N.Y., Nov. 17 2008 — Eastman Kodak Company (NYSE:EK) announced today that it has filed complaints against Samsung Electronics, LG Electronics and other related entities for infringement of Kodak patents.
The Kodak actions specifically allege that Samsung and LG camera phones infringe Kodak digital camera patents. The patents in question cover technology related to image capture, compression and data storage and a method for previewing motion images.
Kodak filed against Samsung and LG in the United States District Court for the Western District of New York, as well as in the U.S. International Trade Commission. Kodak’s District Court complaints request compensation for damages resulting from the companies’ infringement, and both the District Court and ITC actions seek injunctions prohibiting Samsung and LG from further importation and sale of products cited in the complaints. Kodak did not disclose the amount of damages it is pursuing.
Full Circle
In February 2009 both Samsung and LG flied suits at the U.S. International Trade Commission over some alleged patent infringement by Kodak.
LG Settlement
ROCHESTER, N.Y., Dec. 4, 2009 — Eastman Kodak Company (NYSE: EK) announced today that it has entered into a technology cross-license agreement with LG Electronics, Inc., which will allow each company broad access to the other’s patent portfolio.
ITC Ruling
December 18, 2009 – An administrative law judge at the U.S. International Trade Commission ruled that Samsung has infringed two camera patents developed by Kodak.
Samsung Settlement
ROCHESTER, N.Y, January 11, 2010. —Eastman Kodak Company (NYSE: EK) announced today that it has entered into a technology cross license with Samsung Electronics Co Ltd. that will allow each company access to the other’s patent portfolio.
The license agreement, which provides significant benefits to both companies, is royalty bearing to Kodak. The company received a payment from Samsung in December that has been credited toward its royalty obligation. Additional financial details were not disclosed.
In December, Samsung and Kodak agreed to negotiate a settlement over digital camera patents issues, which could include a cross-licensing deal, Kodak said Wednesday.
The companies also entered into an agreement to file joint requests for the termination of patent infringement proceedings before the U.S. International Trade Commission, and to settle their patent infringement lawsuits against each other, which are pending in U.S. District Court for the Western District of New York and in the German courts. Both the settlement of the litigation and the license agreement become effective upon approval by the International Trade Commission of the joint requests for termination. The ITC is expected to make its determination by the end of January 2010.
Tags: Expert witness Korean culture, IP Korea, Kodak, Korea expert witness, Korea law, Korealegal.org, Korean brinkmanship, LG, patent infringement, Samsung Electronics, Southerton Korea legal expert
Kodak is not the only American firm battling the Koreans….
By William McQuillen and Susan Decker
Feb. 13 (Bloomberg) — Whirlpool Corp., the world’s largest appliance maker, lost its bid to try to ban imported refrigerators made by LG Electronics Inc. from the U.S. market.
The U.S. International Trade Commission in Washington yesterday said LG didn’t violate a Whirlpool patent related to the storage of ice in appliances. The commission said in a notice on its Web site that the refrigerators don’t infringe the patent and some elements of the patent are invalid. The reasons for the decision weren’t explained further in the notice.
“We disagree with the ITC’s decision,” said Jill Saletta, a spokeswoman for Whirlpool. “We look forward to receiving the details and will be evaluating our options for next steps.”
The two companies have been fighting for almost two years over the U.S. market for the appliances. LG, currently the third-biggest appliance maker behind Whirlpool and Electrolux AB, aims to become the world’s biggest maker of refrigerators and washing machines by 2012. LG reported 9.5 trillion Korean won ($7.4 billion) in home appliance sales last year.
The ITC judge had twice said LG refrigerators don’t violate Whirlpool’s patent rights related to an ice-storage system that takes up less space in the freezer. The first time, Judge Theodore Essex was ordered to reconsider his findings and in October he again said there was no violation.
LG, based in Seoul, agreed to modify the design of the ice maker in some of its refrigerators to resolve part of the ITC dispute.
Whirlpool Sales
Benton Harbor, Michigan-based Whirlpool, maker of KitchenAid refrigerators and Maytag washing machines, on Feb. 2 reported $17.1 billion in 2009 sales and said fourth-quarter sales in North American rose 4 percent.
Lawsuits between Whirlpool and LG are pending in New Jersey and Delaware. In October, LG claimed Whirlpool’s namesake brand as well as Maytag, Amana, KitchenAid and Jenn-Air refrigerators infringed a patent for a certain type of icemaker. Whirlpool wants a court ruling to clear its name, saying the patent is either invalid or not infringed.
John Taylor, a U.S.-based spokesman for LG, didn’t immediately return messages seeking comment yesterday.
The case is In the Matter of Refrigerators and Components Thereof, 337-632, U.S. International Trade Commission (Washington).