by Dennis Crouch
On September 30, 2024, the Supreme Court held its long conference, and considered whether to grant certiorari in a number of pending patent cases, including the eligibility-focused petition in Eolas v. Amazon. As we await the outcome of that conference, I wanted to highlight another new elitibility petition. This one in Plotagraph v. Lightricks.
Plotagraph, Inc. along with inventors Troy Plota and Sascha Connelly petitioned the court – seeking review of a non-precedential Federal Circuit decision that invalidated five of their patents related to digital animation technology. U.S. Patent Nos. 10,346,017, 10,558,342, 10,621,469, 11,182,641, and 11,301,119. The patented invention allows users to animate portions of digital still photos or video frames by selecting and shifting sets of pixels to simulate motion. For example, the technology could be used to make a waterfall in a still photo appear to be flowing. The Federal Circuit affirmed a district court decision that found these patents ineligible under § 101, concluding that they were directed to the abstract idea of digital animation and lacked an inventive concept.
- Read the petition here: LINK.
- Read the original CAFed decision here: LINK.
- Watch a tutorial on the Plotagraph software here: LINK.
Claim 12 of the ‘641 patent was treated as representative and is directed to a set of stored instructions designed to cause a remote computer to perform the shifting-pixel method. The method has five distinct steps.
- Receive a user-selected starting point on an image frame.
- Receive a user-specified direction associated with that starting point.
- Create a digital link extending from the starting point in the specified direction.
- Select a set of pixels along the digital link
- Shift the set of pixels within the image frame in the specified direction.
I have attached the text of claim 12 at the bottom of this post if you want to compare my summary.
The case began when Plotagraph sued Lightricks in the Southern District of Texas. Lightricks moved to dismiss under Rule 12(b)(6), arguing that the patents claimed ineligible subject matter under § 101. Judge Lee Rosenthal granted the motion, and Plotagraph appealed. In its January 22, 2024 decision, the Federal Circuit panel (consisting of Judges Dyk, Schall, and Reyna) affirmed the district court’s ruling in a non-precedential opinion.
- Alice Step One: Claims are directed to the abstract idea of digital animation, and not to a specific technological improvements in digital image processing. The process of moving pixels along a line is perhaps the most fundamental aspect of digital animation.
- Alice Step Two: The panel characterized the claimed features as “parameter [s] defined by a user through conventional user-interface tools ‘specified at a high level of generality.'”
Plotagraph’s petition for certiorari argues that the Federal Circuit erred in its application of both steps. The petitioners contend that the court overgeneralized the claims as being directed to “animation” or “digital animation” without properly considering the specific technological aspects of the invention. They emphasize that the claimed pixel-shifting process cannot be performed manually or with pen and paper, distinguishing it from cases where courts have found abstract ideas in the automation of manual processes. The petition particularly asks the following question:
[Petitioners] own and practice five patents that disclose applications allowing users to create the illusion of movement within a digital photograph or video. Through a series of specific claimed steps, the patents allow a user to automate pixel shifting in digital photos or videos. The pixel shifting cannot be accomplished manually or with pen and paper.
The question presented is: Whether the claims at issue in the Plotagraph patents are patent-eligible under 35 U.S.C. § 101, as interpreted in Alice Corporation Pty v. CLS Bank International, 573 U.S. 208 (2014) in view of the
claims directed to computer animation as allowed in McRO, Inc. v. Bandai Namco Games America, 837 F.3d 1299 (Fed. Cir. 2016)
As you can see, the petition cites directly to another computer animation case — McRO — a case where the Federal Circuit found the claims eligible. In its decision, the appellate panel distinguished McRO, concluding that the claims here did not incorporate an extensive set of rules that enabled computers to perform animation in a way that eliminated the need for human judgment and intervention. Unlike in McRO, where the claims provided specific rules for automating 3D animation of facial expressions that previously required human animators, the claims in this case merely employed generic computers to perform digital animation more efficiently. The court noted that the claims here simply used computers to perform animation that could otherwise be done manually, without providing any technological advance or improvement to computer functionality.
In its petition though, Plotagraph argues that its claims are analogous to those in McRO, as both involve specific rules or instructions for creating animation effects after preparatory steps. The petition also takes issue with the Federal Circuit’s reliance on cases like Bancorp Services, which involved the automation of manual processes. Plotagraph contends that these cases are inapplicable because there was no evidence presented of a manual or pen-and-paper equivalent to the claimed pixel-shifting technology.
Another significant point raised in the petition is the treatment of factual allegations at the Rule 12(b)(6) stage. Plotagraph argues that its amended complaint contained plausible factual allegations regarding the inventive nature of its technology and its improvement to computer functionality. The petitioners contend that these allegations should have been accepted as true at the motion to dismiss stage, and that the lower courts erred in disregarding them without citing contrary evidence.
I mentioned the pending Eolas petition above. Both Plotagraph and Eolas reflect broader concerns about the impact of current patent eligibility jurisprudence on innovation and the ability of patent holders to have any reliance interest in their intellectual property rights. Petitioners in both cases argue that uncertainty about the patentability of computer-related improvements is stifling research, development, and investment in critical areas of technology. It is this same concern that is driving legislative efforts – most notably the Patent Eligibility Restoration Act (PERA). If PERA were law, these particular eligibility challenges would both go away.
Plotagraph also reflects a fundamental difference between the USPTO’s approach to eligibility during prosecution and that of the courts ex post. In this case, the examiner did reject the claims under Section 101 as ineligible, but for the simple reason that – as originally drafted – the claims could cover transitory storage of the computer code. This rejection was entirely satisfied by the applicant’s amendment adding “non transitory” to the computer storage media requirement.
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David Walker of Schneider Wallace filed the petition for Plotagraph. Jonathan Franklin from Norton Rose is representing the respondent, Lightricks, who as waived its right to respond.
Walker also argued for the patentee before the Federal Circuit and was represented on the brief by Shawn Hunter of the same firm and Raymond Ferrera from Adams and Reese. Robert Greeson of Norton Rose presented arguments for the defendant-appellee, with support from colleagues Stephanie Debrow and Peter Hillegas.
These same firms are also battling over the patents in IPRs before the PTAB.
The Workman Nydegger firm, including, including Brad Barger handled the original prosecution. Oddly, the currently pending continuation APN 17/693,074, was rejected in a January 2023 Office Action. There was no response to that rejection and the case was deemed abandoned in August 2023. However, in August 2024, John Stringham from the firm filed a petition to revive the application based upon unintentional abandonment. These revivals are almost always automatically granted based upon the attorney’s signature and statement that the entire delay was “unintentional” not the result of a “deliberately chosen course of action” by the applicant.
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12. A computer program product comprising one or more non-transitory computer storage media having stored thereon computer-executable instructions that, when transmitted to a remote computer system for execution at a processor, cause the remote computer system to perform a method for automating a shifting of pixels within an image file, the method comprising:
receiving a first indication of a first starting point through a user interface, wherein the first starting point is received through a user selection of a first portion of a first image frame;
receiving, through the user interface, a first direction associated with the first starting point;
creating a first digital link extending in the first direction from the first starting point;
selecting a first set of pixels that are along the first digital link and extend in the first direction away from the first starting point; and
shifting the first set of pixels, in the first image frame, in the first direction.