Suit Seeks To Mute Tech Cos.' Digital Recorders

By Ron Zapata, ron.zapata@portfoliomedia.com

Portfolio Media, New York (March 12, 2008)--LG Electronics USA Inc., Nikon Inc., Samsung Electronics and other companies whose cellular phones, digital cameras, camcorders and other devices include digital recording capabilities have been hit with an infringement lawsuit over patents covering flash memory technology.

E.Digital Corp., a mobile entertainment system manufacturer, filed its latest suit earlier this month in the U.S. District Court for the Eastern District of Texas against seven companies, alleging infringement of four patents. The defendants include Avid Technology Inc., Casio America Inc., LG, Nikon Inc., Olympus America Inc., Samsung Electronics America Inc., and Sanyo North America Corp.

“We consider our intellectual property essential to many current consumer electronics products and of growing importance as the use of flash memory proliferates in these devices,” said William Blakeley, president of e.Digital.

A spokeswoman for Olympus said the company does not comment on pending litigation. The other defendants did not immediately return calls seeking comment on Wednesday.

San Diego, Calif.-based e.Digital had asserted the same four patents against Vivitar Corp. in the same Texas court in September 2007.

Vivitar has denied the infringement claims and has filed counterclaims seeking declaratory relief that the patents are noninfringed and invalid.

Richard Cauley, an attorney representing Vivitar, said the claims seems “pretty counterintuitive.”

“The patents are for the technology used in dictaphones, but the plaintiff is arguing that digital cameras infringe them,” Cauley said.

The four asserted patents, which describe recording methods and file management for devices using flash memory, were each issued by the U.S. Patent and Trademark office between February 1996 and November 1998.

The suits seek a permanent injunction from further alleged infringement, damages and plaintiff's costs.

The patent “claims a record and playback device that records digital audio onto removable flash memory,” said James Sze, an attorney representing e.Digital. “We are hoping to either eliminate the infringement of the patent or to have a license in place which will protect the inventions.”

He said e.Digital may pursue claims against other companies that it believes are infringing the patents.

“We certainly think there is a large number of infringers and we may be missing some,” said Douglas Olson, another attorney representing e.Digital.

E.Digital is a public company spun off from Norris Communications, a company started in 1988 by inventor Elwood “Woody” Norris. He had won the $500,000 Lemelson-MIT award in 2005 from the Massachusetts Institute of Technology for an invention called HyperSonic Sound, which focuses sound great distances to an individual listener.

The company said in February that it would enforce its patent portfolio against companies with more than $20 billion in annual revenues derived from allegedly infringing products.

The company had engaged law firm Duane Morris LLP in March 2007 to assert the four patents on a contingency fee basis, according to a company filing with the U.S. Securities and Exchange Commission. The firm would be entitled to 40% of any licensing fee reached without filing litigation, 40% of total recovery upon filing a lawsuit and 50% upon appeal of a trial.

The company produces the eVU mobile entertainment system, which it sells to airlines around the world.

E.Digital is represented by Duane Morris LLP and Siebman Reynolds Burg Phillips & Smith LLP.

Vivitar is represented by Wang Hartmann Gibbs & Cauley PC.

The patents are U.S. Patent Numbers 5,491,774; 5,742,737; 5,787,445 and 5,839,108.

The case is e.Digital Corp. v. Avid Technology Inc., et al., case number 2:08-cv-00093 in the U.S. District Court for the Eastern District of Texas.