In May, RED Digital Cinema filed a lawsuit against Nikon, alleging that the data compression technology it uses in the Z9 camera violated its patents. Nikon has responded and argues RED’s patent should never have been approved to begin with.
RED’s lawsuit says that a type of compression it has patented is in use by the Nikon Z9 without licensing it. The lawsuit states numerous allegations, all of which Nikon has denied in a new response, as spotted by YM Cinema.
While Nikon admits it was aware of the multiple lawsuits that RED has filed in the past for similar infractions, it argues that the claims that RED brought forward are “invalid” as they do not “satisfy the conditions of patentability.”
RED owns a patent, U.S. patent 8,174,560 (hereafter referred to as ‘560), which describes a “Video Camera” that can be configured to highly compress video data in a visually lossless manner. Nikon recognizes this patent exists, but in its response says that RED offered this particular camera in April of 2006 and accepted down payments for it at the National Association of Broadcasters (NAB) show more than a year before the patent was filed in December of 2017.
“Moreover, on information and belief, in November 2006, RED participated in a public demonstration of the RED camera at the Nuart Theatre in Los Angeles, California. On information and belief, RED exhibited the RED camera and videos taken by the RED camera at this demonstration. The public use of the RED camera showed that RED sufficiently reduced the claimed invention to practice at least by November 2006. Both RED’s offer for sale and public use of the RED camera occurred more than a year before December 28, 2007, the earliest possible effective filing date of the ’560 patent,” the legal response reads.
Nikon adds that in that filing, the company did not disclose the camera’s offer for sale during the prosecution of the ‘560 patent and says that the patent office would not have granted it had they been made aware of this.
“However, RED, James Jannard, and Thomas Graeme Nattress (the named inventors of the ’560 patent), and their representatives did not disclose the RED camera’s April 2006 offer for sale or November 2006 public use during the prosecution of the ’560 patent,” Nikon says.
“The offer for sale and public use of the RED camera are material, because the PTO would not have allowed the ’560 patent had it been aware of these undisclosed events. Also, on information and belief, RED, the named inventors of the ’560 patent, and their representatives acted with a specific intent to deceive the PTO by withholding information about these events, because they knew that disclosure of either of these events to the PTO would prevent the issuance of the ’560 patent. Accordingly, the ’560 patent and its related patents are unenforceable under the doctrine of inequitable conduct.”
Nikon goes on to say that RED is not entitled to injunctive relief because it will be unable to establish that is has suffered any injury, let alone irreparable injury, for any of the other alleged patent infringements.
As a result, Nikon is asking the Court to grant RED nothing, dismiss all claims, and that it be awarded the legal costs it has borne so far in order to respond to RED’s lawsuit.
The full written explanations of Nikon’s stance can be read in Nikon’s legal response. A conference with the Judge has been set for November 10, 2022.