Litigation

Cedar Lane Technologies Inc. v. Kodak Alaris Inc.

closed

6:22-cv-06480

Patents at issue (1)

Defendants (1)

Summary

Cedar Lane sued Kodak Alaris Inc. in W.D.N.Y. on the '242. Listed on the '242 patent page; closed.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

I'll research this case across multiple sources to build a verified overview.

Let me dig into the docket's later entries, the patent itself, and any PTAB activity.

Cedar Lane Technologies Inc. v. Kodak Alaris Inc., No. 6:22-cv-06480 (W.D.N.Y.)

The parties. Cedar Lane Technologies Inc. is a non-practicing entity — the Shenzhen IP Protection Center's October 2022 risk alert describes it as a company organized in Canada in 2019, founded by Greg Benoit (a lawyer with a background in NPE litigation), holding roughly 193 U.S. patents of which about 191 were acquired rather than developed in-house, and having filed on the order of 325 federal patent suits by that date (the same alert asserts it was the most prolific patent plaintiff in the U.S. in 2021 — a secondhand statistic I could not independently confirm). It is a high-volume filer in the camera/sensor-imaging space (security cameras, machine vision, scanners), represented in this matter by Isaac Rabicoff of Rabicoff Law LLC, who signed the complaint and appears in the overwhelming majority of Cedar Lane's suits. Kodak Alaris Inc. is an operating company — the former Kodak document-imaging/personalized-imaging business, headquartered in Rochester, New York, and best known for document scanners; its Rule 7.1 disclosure in this case identifies Kodak Alaris Holdings Limited as its corporate parent (Dkt. 9). It retained Jones Day (with Justin B. Harris appearing locally, Dkt. 8), which describes the defense as developing "strong non-infringement and invalidity defenses" and securing a resolution "before Kodak Alaris responded to the Complaint."

The asserted patents and accused technology. One important flag: the case metadata lists only U.S. Patent No. 8,537,242, but Jones Day's public case description states that Cedar Lane "asserted infringement of three patents generally related to image processing technology and JPEG compression," which matches Cedar Lane's standard three-patent complaint template used across this campaign — U.S. Patent Nos. 6,473,527 ("Module and method for interfacing analog/digital converting means and JPEG compression means"), 6,972,790 ("Host interface for imaging arrays"), and 8,537,242 (same title). The docketed complaint's exhibit set (Exhibits 1–6, Dkt. 1) is consistent with three patent copies plus three claim charts, i.e., the three-patent form.

  • '242 — "Host interface for imaging arrays," issued Sept. 17, 2013, from an application filed Oct. 27, 2005 as a divisional of the application that issued as the '790 patent, with priority back to January 2000; sole named inventor Mark Suska, with the original rights holders listed as Suska and Harusaki Technologies LLC before assignment to Cedar Lane. Claim 1 is a method claim: receiving image data from an imaging array, storing it in a FIFO memory, maintaining a FIFO counter, comparing the count to a FIFO limit, and generating an interrupt to the processor (which then pulls the buffered data at its own pace). Technically it is a FIFO-buffer/handshake architecture for bridging a streaming image sensor to an asynchronous host processor.
  • '790 — the parent system claim (memory + signal generator responsive to buffer fill level + transfer-control circuit); same disclosure.
  • '527 — a front-end module/method for interfacing A/D conversion means with JPEG compression means; notably, Cedar Lane's own filings and third-party databases treat the '527 as expired.

The accused instrumentality is Kodak Alaris's document scanner line and its image-capture/processing pipeline — the sensor-to-host interface and JPEG compression path. The public complaint does not name models in its narrative; consistent with the Cedar Lane template, the accused "Exemplary Defendant Products" are identified only in the claim-chart exhibits, so I could not verify specific scanner models from accessible records. Worth noting for damages purposes: PatSnap and the Shenzhen report both give the '242 an estimated expiry of August 1, 2023, meaning the patent's term was nearly run when suit was filed in November 2022, which cabins recoverable damages to the six-year lookback under 35 U.S.C. § 286.

Posture, venue, and why it matters. Cedar Lane filed on November 2, 2022 in the Western District of New York, Rochester division, assigned to District Judge Elizabeth A. Wolford (Dkt. 1; case-assignment entry of Nov. 3, 2022). Venue is unremarkable and proper under 28 U.S.C. § 1400(b) because Kodak Alaris resides in Rochester — and that is precisely the point: this case is a rare departure from Cedar Lane's W.D. Tex./D. Del. filing pattern (its parallel scanner/camera suits against Ricoh USA, Xerox, Motorola Solutions, Enterprise, Avis and Sixt all landed in Judge Albright's court or Delaware), reflecting a defendant's-home-forum strategy against a large, locally headquartered target. The case was referred to the court's automatic ADR/mediation program at filing, and Kodak Alaris's response deadline was extended by consent to January 12, 2023 (Dkt. 10–11). It never answered: per Jones Day's experience entry (published March 2023), the matter was resolved by negotiated agreement before any responsive pleading, and the case is now closed. I was unable to retrieve the actual dismissal/stipulation entry (the Justia docket snapshot ends November 29, 2022, and PACER was not directly accessible), so the precise dismissal date and whether it was with or without prejudice are unconfirmed.

Why it is worth noting: (1) it is a data point in Cedar Lane's 2020–2023 mass-assertion campaign built on a three-patent imaging-interface portfolio against end-product manufacturers rather than component makers, with most cases resolving quickly — the Shenzhen report puts the median closure at 77 days for the Shenzhen-defendant subset, and Lexology's Docket Navigator retail reports repeatedly list Cedar Lane among the month's most frequent filers; (2) the suit was brought as the '242 neared expiration (and with the '527 already expired), a pattern that converts the case into a backward-looking damages claim on legacy scanner firmware rather than an injunction threat; (3) the '242 has an extraordinary assertion history — the Shenzhen report counts roughly 217 district-court cases — yet I found no record of any IPR or other PTAB validity challenge to the '242, and PatSnap's litigation records for parallel suits list "validity challenges: none recorded," which suggests Cedar Lane's targets have overwhelmingly settled or licensed rather than litigated validity; and (4) the swift, pre-answer resolution by a well-resourced defendant is typical of the campaign's economics, where defense costs dominate early settlement value.

Sourcing and caveats. Docket entries and judge assignment: Justia docket for 6:22-cv-06480 (https://dockets.justia.com/docket/new-york/nywdce/6:2022cv06480/[143176](/patent/143176)). Defense-side characterization and the three-patent assertion: Jones Day experience page (https://www.jonesday.com/en/practices/experience/2023/03/kodak-alaris-resolves-patent-infringement-claims-involving-image-processing-technology). Patent text/prosecution chain: Google Patents US 8,537,242 and US 6,972,790. Plaintiff profile, case counts, and expiry dates: Shenzhen IP Protection Center alert (Oct. 2022, http://www.sziprs.org.cn/szipr/hwwq/jfydzd/content/post_839930.html) and PatSnap litigation summaries. Assertion counts/party categorization: Stanford NPE Litigation Database (https://npe.law.stanford.edu/patent/8537242). Not verified: the dismissal order itself; the specific accused scanner models; Kodak Alaris's ownership history beyond the Rule 7.1 parent disclosure; and the absence of IPR activity (a negative finding from the sources I could reach, not an exhaustive PTAB search).

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

I'll research this case thoroughly across docket sources, PTAB records, and legal press.

Initial results reveal a key detail — Jones Day says the case resolved before Kodak Alaris answered. Let me pin down the dismissal and check PTAB history.

Let me find the full docket (post-November 2022) and confirm how many patents were actually asserted.

Bottom line

This is a pre-answer, paper-only case. Cedar Lane filed a one-patent (per the case record) infringement complaint against Kodak Alaris in W.D.N.Y. in November 2022; Kodak Alaris appeared, obtained a single extension of its response deadline to 2023‑01‑12, and then never answered, never moved to dismiss, and never counterclaimed. Defense counsel (Jones Day) publicly states the matter was "resolve[d] … before Kodak Alaris responded to the Complaint" after the defense "quickly develop[ed] strong non-infringement and invalidity defenses." There was no motion practice of substance, no Markman, no discovery, no trial, no appeal, and no PTAB proceeding on the '242. The docket is closed.

Item Detail
Filed 2022-11-02, W.D.N.Y. (Rochester division), No. 6:22-cv-06480
Judge Hon. Elizabeth A. Wolford
Plaintiff counsel Isaac Philip Rabicoff, Rabicoff Law LLC (Dkt. 2)
Defense counsel of record Justin B. Harris (appearance Dkt. 8, 2022-11-28); Jones Day publicly lists the matter as its engagement
Patents pleaded '242 (per case record); Jones Day describes three patents — see caveat below
Answer / counterclaims None filed
Motions to dismiss / transfer / stay / SJ None
Markman Never reached
Discovery Never reached
Trial / verdict / JMOL / fees Never reached
Termination Negotiated pre-answer resolution; docket closed (see caveat on the exact closing entry)
PTAB (IPR/PGR) on '242 None recorded

Chronology

2022-11-02 — Complaint filed (Dkt. 1). Cedar Lane Technologies Inc. sued Kodak Alaris Inc. for infringement under 35 U.S.C. § 271, with a jury demand, in the Western District of New York. The complaint attached six exhibits (Dkt. 1, Atts. 1–6). Cedar Lane filed its Rule 7.1 corporate disclosure the same day (Dkt. 3).

2022-11-03 — Administrative filing events. AO 120 Report on the Filing of a Patent Action transmitted to the USPTO (Dkt. 5); case assigned to Judge Wolford; automatic referral to the court's ADR/mediation plan; magistrate-judge consent notice issued. Original summons filed 2022-11-03 (Dkt. 6); summons issued 2022-11-04 (Dkt. 7).

2022-11-28 — Defense appears; first (and only) extension sought. Kodak Alaris filed a notice of appearance by Justin B. Harris (Dkt. 8) and a Rule 7.1 corporate disclosure identifying Kodak Alaris Holdings Limited as its corporate parent (Dkt. 9). It then filed a consent motion to extend its answer deadline to 2023-01-12 (Dkt. 10).

2022-11-29 — Extension granted. Judge Wolford's text order: "Defendant shall answer or otherwise respond to the complaint on or before January 12, 2023" (Dkt. 11). This is the last entry retrievable from free docket mirrors for this case.

Dec 2022 – early 2023 — Negotiated resolution before any responsive pleading. No answer, Rule 12 motion, or counterclaim was ever filed. Jones Day's public case study for Kodak Alaris states the firm "successfully negotiated a resolution before Kodak Alaris responded to the Complaint," following development of non-infringement and invalidity defenses. The case study carries a March 2023 date stamp, indicating the resolution was consummated by roughly that window. The docket is recorded as closed.

No further stages. Because the case resolved pre-answer:

  • No motion to dismiss, transfer, or stay (and therefore no § 315(b)/IPR-stay analysis);
  • No Markman hearing or claim construction order — so the key technical dispute that has defined other '242 cases (whether the accused device generates the interrupt/request signal "in response to the quantity of data in the memory," rather than on a fixed timer or external command) was never judicially construed;
  • No discovery (no ESI, no source-code production, no damages discovery);
  • No summary judgment, trial, verdict, JMOL/new-trial motion, or fee motion;
  • No appeal to the Federal Circuit.

Parallel PTAB proceedings

There were no IPR, PGR, or CBM proceedings on U.S. Patent No. 8,537,242 in connection with this case — and none recorded against the patent at all. Third-party patent/litigation databases list the '242's validity-challenge history as "None recorded," notwithstanding its assertion in on the order of 50+ district court cases by Cedar Lane (Stanford NPE Litigation Database; Patsnap litigation record; Unified Patents portal). Stanford NPE DB · Unified Patents

Practical consequences of that absence:

  1. No IPR-estoppel or § 315(e) effect on Cedar Lane or on any licensee/defendant cohort.
  2. No stay motion was possible or necessary — Kodak Alaris resolved the case on the merits papers rather than through the PTAB. This is notable for a mass-filer campaign: an IPR petition is the conventional cost-symmetric counter to an NPE asserting the same patent against dozens of defendants, and Kodak Alaris (a scanner maker accused on its core product line) instead obtained a pre-answer commercial resolution.
  3. The '242's validity was never tested in an Article III or Article I forum, in this case or any other. Cedar Lane's '242 campaign therefore produced zero precedential claim-construction or validity rulings — only dismissals, consent judgments, and licenses.

Strategic read

  1. Kodak Alaris bought certainty cheaply. By pairing a consent extension with a fast non-infringement/invalidity assessment, it avoided the two costs that dominate NPE defense — motion practice and discovery — and exited before its response deadline. That is the optimal posture for a single-product-line defendant facing a portfolio-wide filer: no admissions, no invalidity counterclaim to litigate, no estoppel exposure.

  2. This case is a data point in Cedar Lane's scanner/imaging wave, not an outlier. The same three-patent imaging family ('527 / '790 / '242) was asserted in late 2022 against scanner and imaging OEMs and their customers — Ricoh USA (6:22-cv-01119), Xerox, Lexmark (1:22-cv-01561, D. Del., filed 2022-12-01), Konica Minolta (October 2022), Digital Check, Visioneer-adjacent targets — typically on 2–3 patents per complaint. IPWatchdog's filing roundups tag Cedar Lane as an "[IV selloff]" plaintiff, i.e., an entity monetizing an Intellectual Ventures-transferred portfolio. IPWatchdog roundup The overwhelming majority of these cases terminated by voluntary dismissal or consent judgment without a merits adjudication — the same outcome as here.

  3. Venue was likely chosen for the defendant's presence, not for a plaintiff-friendly forum. Kodak Alaris's U.S. operations are Rochester-based, making W.D.N.Y. a natural and defensible venue; Cedar Lane's other 2022 filings were concentrated in W.D. Tex. (Albright) and D. Del. This case is one of Cedar Lane's few W.D.N.Y. filings on the '242.

  4. The patent's commercial life ran out on its own. Third-party databases put the '242's estimated expiration at 2023-08-01 (earliest priority 2000-01-21; issued 2013-09-17). If accurate, the '242 reached end of term within months of this dismissal — meaning the resolution here was effectively a cheap end-of-life settlement, and no future '242 assertion against Kodak Alaris is possible regardless of dismissal prejudice. (Expiry is a database estimate, not a court or PTO determination; confirm against the patent's terminal disclaimer and § 154 history before relying on it.)

  5. The dismissal's prejudice status is unverified and now largely moot. Free mirrors truncate at 2022-11-29; the closing document (likely a Rule 41(a)(1)(A)(i) notice or stipulation of dismissal) and its with/without-prejudice character are not confirmed. Given the patent's expiration, the distinction has little practical bite.


Sourcing caveats — please read before relying on this

  • The exact closing docket entry (number, date, and whether dismissal was with or without prejudice) is not verified. Justia's docket for 6:22-cv-06480 was last retrieved 2022-11-29 and thus contains entries only through Dkt. 11. I did not retrieve a PACER pull or a CourtListener/RECAP record covering the closing entry. The termination is established circumstantially and by defense counsel's own account, not by a cited docket document.
  • The number of asserted patents is contested between sources. The case record supplied to me lists only the '242; Jones Day's own case study says Plaintiff "asserted infringement of three patents generally related to image processing technology and JPEG compression." The complaint's six exhibits are consistent with a three-patent pleading (patent copy + claim chart each), matching Cedar Lane's standard '527/'790/'242 template. I could not open the complaint to confirm the patent numbers pleaded. The '242 is unquestionably among them; treat '527 and '790 as probable but unconfirmed additions.
  • Defense counsel's firm affiliation is inferred. The docket identifies Justin B. Harris as counsel of record; Jones Day publicly lists this matter as a Kodak Alaris engagement. I did not independently confirm from PACER that Harris was appearing for Jones Day in this case (as opposed to local counsel of record alongside a Jones Day pro hac vice admission, which would require a pro hac vice motion — none appears on the docket through 2022-11-29, though such a motion would ordinarily have been unnecessary if the case resolved pre-answer).
  • No Law360, Reuters Legal, IPWatchdog, Patently-O, or Federal Circuit coverage of this specific case was located. Its newsworthiness was low precisely because nothing happened: no ruling, no verdict, no IPR. The only substantive account is Jones Day's own marketing description.
  • No parallel PTAB proceeding exists to report. To the extent the '242 was ever the subject of a petition, it is not reflected in the Stanford NPE database, the Unified Patents portal, or Patsnap's challenge record, all of which show no validity challenges.

Primary sources: Justia docket, No. 6:22-cv-06480 · Jones Day case study (Mar. 2023) · Stanford NPE Litigation Database, '242 · [Unified Pat

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the docket and counsel for this case.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

I'll research the defense-side counsel of record for this case.

Let me pin down Justin B. Harris's firm and any other defense counsel.

Let me verify Justin B. Harris's firm directly and check whether other counsel appeared.

Counsel of record — defendant Kodak Alaris Inc.

Only one attorney ever appeared on the docket for Kodak Alaris. The appearance is documented at Dkt. 8, and the same ECF filer (Harris, Justin) signed every defense filing in the case. There is no pro hac vice motion, no second notice of appearance, no local-counsel entry, and no in-house counsel appearance anywhere in the retrievable docket.

# Attorney Role Firm / office Note
1 Justin B. Harris Sole counsel of record (lead and only appearance) Jones Day, New York, NY office (per Law360 attorney profile; Jones Day is the firm that publicly claims the engagement) Appeared 2022-11-28 (Dkt. 8); filed Kodak Alaris's Rule 7.1 disclosure (Dkt. 9) and the consent motion for extension of time (Dkt. 10). New York bar, admitted 2020 (NY OCA reg. #5761879) — i.e., a junior associate at the time of appearance, roughly two years out. Law360's profile for him lists 14 matters, concentrated in W.D.N.Y. (consumer-credit cases such as Taylor v. Mariner Finance and Mills v. Experian, both 2024), which is consistent with an associate who covers W.D.N.Y. dockets for the firm.

Docket trail for this attorney (all from the Justia docket, No. 6:22-cv-06480):

  • 2022-11-28 — Dkt. 8: "NOTICE of Appearance by Justin B. Harris on behalf of Kodak Alaris Inc."
  • 2022-11-28 — Dkt. 9: Corporate Disclosure Statement identifying Kodak Alaris Holdings Limited as parent (signed "Harris, Justin").
  • 2022-11-28 — Dkt. 10: Consent MOTION for Extension of Time to File Answer to 2023-01-12 (signed "Harris, Justin").
  • 2022-11-29 — Dkt. 11: Judge Wolford's text order granting Dkt. 10.

Beyond Dkt. 11 the free docket mirror is truncated (last retrieved 2022-11-29), so I cannot exclude a later-filed appearance — but since Kodak Alaris never answered, moved, or counterclaimed, and Jones Day states the matter resolved before any response to the complaint, nothing further would ordinarily have been filed.


Two corrections / flags for the earlier sections

  1. "Local counsel" characterization should be corrected. The prior sections describe Harris as "appearing locally" in Rochester. The record does not support that: no Rochester firm appeared, and Law360 identifies Justin B. Harris as a Jones Day (New York, NY) attorney. He is best described as Jones Day's counsel of record admitted in W.D.N.Y., not local counsel standing in for an out-of-town firm. W.D.N.Y. permits New York-barred attorneys to appear without a Rochester-based sponsor, which explains the absence of a local firm.
  2. No Jones Day partner or pro hac vice sponsor is of record. Jones Day's public case study attributes the result to a team that "quickly develop[ed] strong non-infringement and invalidity defenses," but the firm published no attorney names, and the docket shows only Harris. The substantive defense assessment was presumably done by senior Jones Day lawyers (likely IP practitioners in the firm's New York or Cleveland/Chicago IP groups) who never entered an appearance because the case settled pre-answer — an entirely normal pattern, but it means the names of the partner-level defense team are unverifiable from court records.

Identity caveat (please read)

A New York state bar registration record for a "Justin Blake Harris" (admitted 2020, Harvard Law, NY reg. #5761879) shows a current practice address at Rolnick Kramer Sadighi LLP, New York, NY — not Jones Day. I could not definitively reconcile that record with the Law360 profile listing "Justin B. Harris" under Jones Day, New York, NY. The possibilities are (a) the same attorney moved firms (Law360 data can lag, or the OCA record could be current and Law360 stale), or (b) these are two different New York attorneys with nearly identical names. What is not in doubt is that the person who signed Dkts. 8–10 as counsel for Kodak Alaris is Justin B. Harris, and that Jones Day is the firm publicly identified as having represented Kodak Alaris in this matter. Treat the specific office/firm attribution for Harris as high-confidence but not PACER-confirmed, and the bar-registration match as unconfirmed.

Nothing to report on other categories

  • In-house counsel: none appeared; Kodak Alaris's legal department is not on the docket.
  • Co-defendants: none — Kodak Alaris is the sole defendant, so there is only one defense-side team.
  • Sealed filings: none indicated; the case never reached the discovery or sealing stage.
  • Withdrawn/substituted counsel: none.

Sources: Justia docket, 6:22-cv-06480 (Dkts. 8–11) · Law360 attorney profile, "Justin B. Harris, Jones Day" (New York, NY) · Jones Day experience page for Cedar Lane v. Kodak Alaris · NY OCA registration data as reflected at plainattorney.com (identity caveat above).