ich habe gerade eine relativ ausführliche Arbeit gefunden, die sich u.a. mit den Patentstreitigkeiten zwischen Honeywell und Minolta 1987 bis 1992 um die Erfindung des Autofokus beschäftigt, bei denen Minolta schließlich unterlag und zu hohen Zahlungen an Honeywell verurteilt wurde.
Da es dazu immer wieder Spekulationen - auch hier im Forum - gibt und eine ganze Reihe Gerüchte im Netz kursieren, ohne daß man viele verläßliche Quellen dazu findet, hoffe ich, daß diese Texte, die bereits 1998/1999 im Rahmen der Stanford Technology Law Reviews (STLR) veröffentlicht wurden, mithelfen können, einige Fragen zu klären und ein bißchen mehr Licht in den Hintergrund und die Vorgeschichte dieser Auseinandersetzung zu bringen. Besonders interessant finde ich, daß auch einige Namen, die fraglichen Patentnummern und Quellen erster Hand aufgeführt werden, die tiefergehende Recherchen ermöglichen.
ZITAT"Patent Litigation and Its Relationship to Industry Structure and Competition in the Photographic Film and Camera Industry"
John H. Barton
Sony J. Parapatt [*]
¶13 Minolta Co. Ltd. was founded in 1928 in Osaka, Japan. The company is best known for its cameras, copiers and micrographic products. The company has two product segments: Image Information Products and Optical Products. The latter segment accounts for the manufacture of cameras, lenses, and their accessories. In 1990, sales of cameras and accessories accounted for 43% of total sales and Minolta commanded 25% of the world camera market.  The company has six facilities in Japan and one each in the United States, Germany, Brazil and Malaysia for research and development activities.
¶14 The company established its operations in the United States around 1960 and by 1974 had offices in Los Angeles, Chicago and Atlanta.  The Maxxum camera series that utilized the autofocus technology that was the subject of its litigation with Honeywell was the most significant product brought to the market by Minolta. From a position of financial difficulty in 1983, the company grew rapidly from sales of the Maxxum cameras. The net worth of Minolta increased from $220 million in 1985 to $800 million in 1990. [/quote]
¶15 Honeywell Inc. was incorporated in 1927. The company is self-described as an international controls corporation that supplies automation and control systems, components, software, products and services for homes and buildings, industry, and space and aviation. The company had sales of over $8 billion in 1997.  In the 1960s the company developed autofocus technology with regard to slide projectors. Norman L. Stauffer, who developed the technology, received the 1988 technical achievement award from the Photographic Manufacturers and Distributors Association for his work. The company did not itself enter the photographic camera industry but instead chose to contract with several Japanese companies including Minolta to allow them to commercially exploit the technology. The company filed suit against Minolta in 1987 after years of failed negotiations over the terms of Minolta's use of its technology. [/quote]
ZITATIII. Patent Infringement Suit Against Minolta by Honeywell 
¶40 In 1987, Honeywell, Inc., a Delaware corporation sued Minolta and its American subsidiary, Minolta Corporation for patent infringement involving three 13-year-old patents allegedly infringed by Minolta in the manufacture of the MAXXUM 5000, MAXXUM 7000 and MAXXUM 9000 cameras. United States Patent No. 3,860,935 related to a camera in its entirety and not just the autofocusing apparatus while Patent Nos. 3,875,401 and 4,022,899 related to focus detecting apparatuses. Later Reissue Patent No. 29,599 was included in the infringement suit that related to automatic exposure control, flash and focusing in cameras. Herbert Keppler, an industry reporter, described autofocus technology as the "Holy Grail" in technological innovation for camera manufacturers. The innovation revived the shrinking market in single lens reflex cameras from 1985 onwards. 
¶41 Honeywell amended its Complaint on November 2, 1989. A new allegation involved Honeywell's claim that a contract between it and Minolta entitled the "Honeywell, Inc. TCL Auto/Focus Advance Disclosure Agreement," (TCL) had been violated. According to Honeywell, Minolta Japan agreed that the Honeywell design information was proprietary to Honeywell and that Minolta's rights to use the technology included a provision to use a Honeywell manufactured component as an integral part of the camera. Honeywell alleged that about late 1984, Minolta breached the TCL agreement that ran from 1979 to 1985 by marketing a single lens reflex camera using Minolta's own autofocus component that was developed using Honeywell's confidential proprietary design information.
¶42 The case went to trial in September 1991 and lasted four months. The jury heard from translators on behalf of Minolta's Japanese executives and from Mr. Stauffer who spent three weeks himself on the witness stand. In March 1992, Honeywell was awarded $96.35 million by the trial jury which including compensation for sales outside the United States and interest added to $127.5 million. The court held that Minolta was not guilty of a breach of contract although it was in violation of two of Honeywell's patents. The infringement was ruled not willful. The parties negotiated to allow Minolta continued use of the technology. Honeywell agreed not to pursue an injunction to prevent the sale of Minolta cameras in the United States in exchange for Minolta's agreement not to challenge the court decision.  Christopher Steffen, the Executive Vice President at Honeywell stated that the case had cost Honeywell a total of $14 million. Also, Mr. Steffen announced that Honeywell intended to devote $1 million of the proceeds to set up a defense fund to support intellectual property actions by entrepreneurs against unjust competition.
A. Historical Background to the Litigation
¶43 The development of autofocus technology at Honeywell began in the 1960s when Norm Stauffer invented automatic focusing capability in slide projectors. Around 1973, Honeywell undertook to develop a commercial autofocus product based on the invention in Mr. Stauffer's pending application that became '899. The program was called "Stadia I," and the resulting product, the Honeywell Visitronic Autofocus module was first sold in 1976. Mr. Stauffer contemplated that the commercial version of the '899 patent could employ an integrated circuit ("IC" chip with photodetector elements. The failure of the final '899 patent to reveal the existence of Honeywell's Stadia I IC chip was the basis of Minolta's defense against infringement of the '899 patent. 
¶44 In 1979, Honeywell informed Minolta and other Japanese companies that it was developing autofocus technology for single-lens-reflex cameras, which were a growing share of the market for cameras. Honeywell signed TCL agreements with Minolta and 14 other photographic companies that provided for the use of Honeywell's proprietary technology in exchange for using a Honeywell manufactured component in the final cameras. As part of its agreement with Minolta, Honeywell delivered 25 Honeywell developmental components in 1981. In 1982 and 1983, another 14,000 units were sold to Minolta for over $300,000.
¶45 The first cameras to use the Honeywell technology were commercial failures. According to Minolta, they notified Honeywell that the TCL technology would have to be improved if Minolta was to continue to use it. Also, Minolta informed Honeywell that they were pursuing their own autofocus system. Honeywell responded in 1983 with several demands that Minolta pay half of the cost of improvements and commit to purchases and accept delays in the completion of the project. Eventually, Minolta abandoned working with Honeywell and developed its own autofocus system. When Minolta brought the MAXXUM autofocus SLR cameras to market in 1985, the SLR market that had been shrinking began to take off. In addition to the SLR market, the autofocus technology was also employed in lens shutters, thereby growing the market for "point-and-shoot" cameras. Minolta's commercial success with the MAXXUM camera was astounding and by 1992, the company had sales from the MAXXUM line of $1 billion. 
B. Specific Patent Rulings and Protection of Intellectual Property in the Suit 
¶46 The case moved slowly through discovery from 1987 till June 1990 at which time, Honeywell filed a complaint with the International Trade Commission seeking to ban the import, into the United States, of Minolta cameras that used the autofocus technology.  On the public front, Honeywell sought attention for its ITC complaint by using the slogan "Not only from the mind of Minolta," in its press release. The ITC complaint enabled Honeywell to demonstrate the urgency of its case and as a result, U.S. District Judge Alfred Wolin promised Honeywell a trial date in 1991.
¶47 On April 5, 1991, Judge Wolin denied Minolta's motion for partial summary judgment with regard to Claims 28, 29 and 34-40 of Patent 4,002,899 issued to Honeywell on January 11, 1977.  Minolta argued that the '899 patent was invalid for failure under 35 U.S.C. §112 to satisfy the best mode requirement. The standard of the best mode requirement is that "in exchange for giving the inventor patent rights, [the public] obtains from the inventor a full disclosure of the inventor's preferred embodiment of the invention."  Minolta argued that Mr. Stauffer contemplated the Stadia I IC chip as the best mode but did not reveal his idea. The holding turned on the fact that the Stadia I IC chip was still in the testing and developing stage and therefore, Mr. Stauffer was under no obligation to reveal its existence. The court held that Mr. Stauffer had neither violated the "Best Mode Contemplated" nor the "Adequacy of the Best Mode Expressed" prongs of the requirement of §112.
¶48 Judge Wolin also ruled in favor of Honeywell that the thrust of the TCL agreement was the transfer of design information from Honeywell to Minolta as intellectual property rather than as goods.  If the TCL agreement that partially involved the sale of components from Honeywell to Minolta had been treated as a contract agreement for the sale of goods, then the rules of the Uniform Commercial Code would have been applicable. Minolta had sought recognition of the contract as governed by the UCC because Honeywell's suit would have been barred by the UCC's four-year statute of limitations. The court rejected Minolta's argument that since "Minolta could only use the design information if it purchased components from Honeywell, [therefore] the TCL agreement must have the sale of the components as its predominant purpose."  Judge Wolin noted that Minolta's benefit from the TCL contract was not meaningless in the absence of the sale of goods from Honeywell. Instead, he noted that: "In this case, Minolta was positioning itself in the emerging autofocus market. It had an interest in knowing what autofocus technology Honeywell had to sell because Honeywell was selling it to other photographic companies . . . Minolta also had an interest in comparing the design information with its own technology." 
¶49 On July 29, 1991, the court denied Minolta's motion for summary judgment on claims 4, 5 and 6 of Reissue Patent No. 29,599. Minolta argued that the patent was invalid due to obviousness. Francis Ogawa, an electrical engineer for Honeywell during the 1970s had filed the patent application in October 1973. Minolta cited to two prior patents in support of its argument for obviousness. U.S. Patent No. 3,442,193 issued in 1969 disclosed an automatic focusing system where the focusing operation is complete before the shutter opens and the focus operation is reset after the exposure is complete. Patent No. 3,654,843 issued in 1972 taught automatic exposure control and automatic flash. The ruling turned upon Minolta's failure to establish the specific knowledge and experience that would constitute ordinary skill for a person in the field in order to make a determination of obviousness. 
¶50 On the breach of contract claim, Minolta motioned for summary judgment on the basis that "as a matter of law, certain disclosures, by Honeywell and others, placed [Honeywell's proprietary] information in the public domain or otherwise rendered it no longer confidential as to Minolta."  These disclosures included Honeywell's TCL brochure to Minolta and other camera companies prior to signing TCL agreements, an April 1980 article in Modern Photography on TCL using information provided by Honeywell, and an English language repair manual published by Olympus Optical Company in 1983 for cameras sold with TCL components. Judge Wolin partially dismissed the motion and affirmed the patent principle that "trade secret[s] may exist despite the publication of general descriptions in advertisements and sales products." 
C. Settlement and Impact on Photographic Industry
¶51 Honeywell in its original Complaint in 1987 sought $174 million in damages and argued later at trial for $75 per camera in royalty fees. In March 1992, Honeywell was awarded $127.5 million for patent infringement by Minolta on patents that apparently had never been commercially exploited or licensed by Honeywell itself. Remarkably, Honeywell held 80 patents associated with autofocusing technology.  Concurrently with its suit against Minolta, Honeywell also sued other camera makers using its autofocus technology. Honeywell collected a total of $11.4 million in 1992 from Chinon ($4.5 million), Ricoh and Vivitar. Other companies that settled with Honeywell included Nikon ($45 million), Asahi (Pentax cameras, $21 million), Canon, Olympus Optical Company ($34.7 million), Konica, Kyocera, Matsushita and Premier Camera Taiwan Ltd.. The total damages recovered by Honeywell exceeded $300 million. 
¶52 Minolta argued repeatedly in public relations announcements that Honeywell's suit was merely recognition of its failure to successfully market its autofocus invention. Instead, Minolta claimed that it was being sued for technology that was independently developed by its researchers. According to Minolta, Honeywell's patents were merely "paper patents" that were unused, invalid and duplicative of prior art in the field. Basically, Honeywell sought to compensate for the failure of its photographic business by riding on Minolta's success. In response, Honeywell contended that at stake was the fundamental protection of investment in intellectual property, a comparative industrial advantage to be protected by all U.S. companies in the face of foreign competition.
¶53 The settlement between the several Japanese camera manufacturers and Honeywell was partly a reflection of the reluctance by the Japanese to enter into litigation. The jury system in the U.S. was seen as strange compared to the judicial system of Japan. Moreover, Japanese companies were not adequately prepared to fight patent infringement actions with counter-suits. Japan has traditionally not been seen as leading the way in basic science patents and the royalty payments by Japanese companies have supported this conclusion. In 1990, Japan experienced a deficit of $3.5 billion in trade for patents and trademarks while in the same time, the United States received $12.7 billion in surplus.  In the aftermath of the Minolta settlement, Japanese companies began to pay more attention to their patent portfolios with a view toward protecting themselves in the future and earning royalties for their inventions. In fact, Japanese companies are among the most represented in the top 25 registrants of patents with the U.S. Patent Office. In 1997 and 1996, 11 of the top 25 companies were Japanese. This domination by Japanese firms means that they are likely to be able to find patents of their own that have been infringed, if needed to fight suits by foreign manufacturers. 
¶54 A parallel recent example of patent protection in the photography industry is Fuji's complaint with the International Trade Commission to protect its one-time use camera patents. The announcement of the complaint was made on February 12, 1998. Fuji charged that 15 of its United States patents covering one-time use cameras, or Lens-Fitted Film Packages ("LFFPs", had been infringed. The 28 defendants named included Vivitar, Konica and other manufacturers including companies from China, Korea and the United States. Fuji has requested an investigation with the purpose of obtaining a permanent general exclusion order, denying entry into the United States of any one-time use cameras that infringe Fuji's patents. Fuji's one-time use camera product is the QuickSnap introduced in the U.S. in 1987. Since 1995, Fuji has manufactured one-time use cameras at its US plant in Greenwood, South Carolina. 
¶55 The most damaging form of infringement cited by Fuji was the practice of several defendants to manufacture and sell one-time use cameras remanufactured outside the United States. In such cases, Fuji camera casings are purchased from photofinishers and remanufactured by replacing the frame counter, inserting a roll of unexposed film and resealing the broken shell. Patent protection is clearly one of the means by which Fuji is attempting to curtail manufacturing practices that affect their market share of one-time use cameras as well Fuji's interest in the quality of one-time use products available in the market.
¶56 The Honeywell litigation and the latest Fuji Complaint demonstrate the continuing importance of patent protection and more generally the protection of large investments in research and development to the major manufacturers. The photography industry does not frequently enjoy innovative product introductions that have a significant impact on industry demand. In 40 years, there have only been about six major changes in the industry, namely: Kodak's introduction of color film (1950s), instamatic cameras (1960s), Polaroid's successful SX-70 instant camera (1972), autofocus and "point and shoot" 35mm cameras (1980s), Fuji's one-time use camera (1986) and the Advanced Photo System (1994). In this environment, a company that succeeds in single-handedly introducing a successful product, which inevitable requires a large portfolio of related patents, will seek to vigorously protect its investment. The following section on the development of the Advanced Photo System demonstrates the importance of coordination in the industry in the face of large research and development costs and risk of large losses associated with a failed product.[/quote]
[*] John Barton, BS Marquette 1958, JD Stanford 1968, is George E. Osborne Professor, Stanford Law School; Sony Parapatt, BA Franklin & Marshall1995, is a second-year law student, Stanford Law School. This paper has not been modified from its original version as presented at the Stanford Workshop on Intellectual Property and Industry Competitive Standards, except for a few factual corrections and observations provided by the panelists Cecil Quillen and Nancy T. Gallini. Images for the Masses: The Worldwide Photography Industry, Case Study 9-390-163, Harvard Business School, 1992. Minolta Corporate Overview (visited Feb. 10, 1998). Honeywell Corporation News Conference Regarding Settlement With Minolta Corporation, FEDERAL NEWS SERVICE, February 10, 1992. Honeywell Inc. 10K for the year ended December 31, 1997, March 18, 1998. Josephine Marcotty, No Longer Camera-Shy; Aggressive Pursuit of Patent Lawsuit Show a Bold New Focus at Honeywell, STAR TRIBUNE, Feb. 18, 1992 at 1D. The background information is taken from the following cases: Honeywell, Inc. v. Minolta Camera Co. Ltd., 1988 WL 68932 (D.N.J. 1988); 1990 WL 66182 (D.N.J. 1990); 1991 WL 50063 (D.N.J. 1991); 1991 U.S. Dist. Lexis 20743 (D.N.J. 1991); 1991 U.S. Dist. Lexis 20744 (D.N.J. 1991); and 1991 U.S. Dist. Lexis 20746 (D.N.J. 1991). Honeywell Corporation News Conference Regarding Settlement With Minolta Corporation, FEDERAL NEWS SERVICE, Feb. 10, 1992. Josephine Marcotty, Honeywell Files Patent Infringement Suit Against 6 Camera Manufacturers, STAR TRIBUNE, March 5, 1992, at 1D. Honeywell, Inc. v. Minolta Camera Co. Ltd., 1991 WL 50063 (D.N.J. 1991). Minolta Settles Suit On Honeywell Patents, N.Y. TIMES, March 5, 1992, at D4. See Appendix A-3 for a summary of three of the four patents in dispute. Eugenio Ramos, Honeywell Seeks to Keep Minolta Cameras Out of U.S. Market, REUTERS BUSINESS REPORT, June 14, 1990. Honeywell, Inc. v. Minolta Camera Co. Ltd., 1991 WL 50063, *1 (D.N.J. 1991). Id. Honeywell, Inc. v. Minolta Camera Co. Ltd., 1991 U.S. Dist. Lexis 20743, *11 (D.N.J. 1991). Id. at *21. Id. at *24. Id. at *8, *11. Honeywell Inc. v. Minolta Camera Co. Ltd., 1991 U.S. Dist. LEXIS 20746, *1 (D.N.J. 1991). Id. at 19-20. Lee, supra note 34. New Honeywell Settlements, N.Y. TIMES, Dec. 29, 1992, at D2; Olympus, Asahi Settle Patent Disputes With Honeywell, JAPAN ECONOMIC NEWSWIRE, Sep. 25, 1992; Kenneth N. Gilpin, Honeywell Patent Suit is Settled, N.Y. TIMES, Apr. 22, 1992, at 35. A.E. Cullison, Patent Suits Aggravate US-Japan Trade Tension, J. COMMERCE, May 26, 1992, at 4A. See Appendix A-4 for a count of utility patent filings by company and by country. FujiFilm Files Complaint with ITC to Protect One-Time Use Camera Patents, FUJI FILM NEWS, Feb. 13, 1998.
(Vielleicht sollte man noch erwähnen, daß eine amerikanische Billion einer deutschen Milliarde entspricht und daß D.N.J. in Zitaten die offizielle Abkürzung für "The United States District Court for the District of New Jersey" ist.)