Counsel Q&A: Why our rival’s Alice claims didn’t make the cut
A recent decision involving digital animation and image editing technology has highlighted the importance of stronger patent claims, explains Robert Greeson of Norton Rose Fulbright, who led the winning trial team.
Software firm Lightricks, creator of the image editing app Facetune, recently fought off an infringement claim involving five patents owned by a rival relating to digital photo and video technology.
The owner of those patents is Plotagraph, which provides image animation software that brings motion to still images.
The Facetune app, meanwhile, can “help you create images and videos that make you feel like the best version of yourself”, according to Lightricks.
What swung a Court of Appeals’ decision was all down to patent eligibility under the Alice subject matter eligibility test, (Alice Corp v CLS Bank Int’l), and underscores the need to prove technological improvement over prior art.
Case in brief
Back in November 2021, Plotagraph sued Lightricks in the US District Court for the Southern District of Texas.
Plotagraph described the patents as technology that allows users to animate portions of a digital still photo or a frame of a video file by selecting a set of pixels within the photo or video file, which are then shifted to simulate motion.
“For example, a still photo showing an individual standing before a waterfall could be animated to have the waterfall in the still photo appear to be flowing,” said Plotagraph in its claim.
In response, Lightricks filed a Rule 12(b)(6) motion to dismiss for failure to state a claim and for patent ineligibility under §101.
In August 2022, the district court granted this motion and permanently dismissed the case for failure to state a claim, concluding that the patents were ineligible under the Supreme Court's Alice decision.
Plotagraph appealed to the US Court of Appeals for the Federal Circuit, but Judge Lee Rosenthal upheld this decision on January 22, 2024, agreeing that the patent claims focused on an abstract idea without a sufficient inventive concept.
How Lightricks won
Robert Greeson—co-head of the Dallas Intellectual Property Group at global law firm Norton Rose Fulbright—led the trial team for Lightricks. He tells WIPRhow the team achieved this victory for their client.
WIPR: What was the trial team’s strategy and why did it lead to your success?
RG: “Our strategy was to focus the court on the abstract nature of the claims. The parties argued over how the claims should be characterised for the purposes of Alice Step 1 [to determine whether the claims are “directed to a patent-ineligible concept”, such as an abstract idea.]
“Here, we argued that the claims—consistent with the patents themselves and the plaintiffs’ allegations in the complaint—were merely directed to the abstract idea of ‘digital animation’.
“We also emphasised that the claims did not improve computer functionality itself, but rather used a generic computer as a tool to perform animation more efficiently.
“Federal Circuit case law supported our position insomuch as it has held that the mere process of automation, or making a known process more efficient, does not impart eligibility.”
What did you find most interesting about this case?
“I found the analysis of eligibility versus ineligibility interesting in the context of digital animation and image editing technology.
“The claims here fell short because they were specified at a high level of generality rather than being directed to a specific technological improvement.
“But technology in this industry continues to rapidly advance, so patent owners should focus claims on those concrete advancements.”
Did Plotagraph present any obstacles that were particularly challenging to overcome?
“The main challenge on appeal was overcoming the plaintiffs’ conclusory assertions of eligibility and arguments that the patents’ claims satisfied Alice Step 2 [the requirement to prove an ‘inventive concept’].
“But here, the plaintiffs could not show that the claims offered ‘something more’ to confer eligibility to an otherwise abstract idea.
“I think this is the correct result because, as both courts noted, the claims included a preamble, a series of preparatory steps performed by a human on a generic GUI [graphical user interface] and then an ‘animation’ step.
“However, the final animation step included no ‘hook’ that the court could find offered something more.”
What are the most important aspects of protecting digital technology IP?
“Key aspects in protecting digital IP include: focusing the claims on discrete technological improvements disclosed in the specification; avoiding merely claiming automation of a manual process using generic computer components; and substantiating eligibility at the pleading stage with plausible allegations rather than relying on conclusory statements.
“The fast pace of advancement in digital technology raises difficult questions, but following Federal Circuit precedent provides guidance.”
Robert Greeson’s co-counsel for Lightricks at Norton Rose Fulbright were Stephanie DeBrow and Peter Hillegas (Austin); Erik Janitens (Houston); and Taylor Shields (Denver).
The case is Plotagraph v Lightricks, 4:21-cv-03873.
The patents at issue were US patents 10,346,017; 10,558,342; 10,621,469; 11,182,641; and 11,301,119.
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