DCT
3:25-cv-00193
Imagesails LLC v. Precision Sails
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: ImageSails, LLC (Florida)
- Defendant: Precision Sails (Canada)
- Plaintiff’s Counsel: Murthy Patent Law Inc.
- Case Identification: 3:25-cv-00193, N.D. Cal., 01/06/2025
- Venue Allegations: Plaintiff alleges venue is proper because Defendant, a Canadian corporation, conducts business and has committed acts of infringement in the Northern District of California by using the accused methods in connection with providing services to customers in the district.
- Core Dispute: Plaintiff alleges that Defendant’s process for producing sails with high-resolution printed images infringes a patent related to a multi-step method for designing, printing, and assembling such sails.
- Technical Context: The technology concerns a digital workflow for applying custom, high-resolution graphics to functional sailcloth without compromising the sail's performance, targeting the marine advertising and vessel customization markets.
- Key Procedural History: The patent-in-suit was subject to a Terminal Disclaimer filed during prosecution to overcome an obviousness-type double patenting rejection over a related patent. The patent was assigned from the inventor to the Plaintiff approximately four months prior to the complaint's filing. Plaintiff alleges it sent multiple emails to Defendant regarding the patent family prior to filing suit.
Case Timeline
| Date | Event |
|---|---|
| 2014-08-15 | Priority Date for U.S. Patent No. 10,618,618 |
| 2020-04-14 | U.S. Patent No. 10,618,618 Issued |
| 2021-01-01 | Alleged date of Defendant's knowledge of the parent application (approx.) |
| 2022-12-06 | Plaintiff's counsel sent email to Defendant regarding parent application |
| 2022-12-30 | Plaintiff's counsel sent email to Defendant regarding parent application |
| 2023-01-18 | Plaintiff's counsel sent email to Defendant |
| 2023-03-02 | Plaintiff's counsel sent email and letter to Defendant |
| 2024-09-03 | Inventor assigned '618 Patent to Plaintiff ImageSails, LLC |
| 2025-01-06 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,618,618 - "Sail Printing Process," issued April 14, 2020
The Invention Explained
- Problem Addressed: The patent’s background section identifies a need for a method to print high-quality, custom images onto functional sails without the drawbacks of prior art techniques like painting, sewn-on patches, or laminates, which could add weight, reduce flexibility, and compromise performance (’618 Patent, col. 1:46-67). Existing methods were often limited to simple vector graphics or resulted in heavy, clumsy sails relegated to advertising in calm waters (’618 Patent, col. 2:5-26).
- The Patented Solution: The invention claims a comprehensive digital process that begins with designing a sail using specialty sailmaker software, then uses graphic design software (like Adobe Photoshop) to manipulate a high-resolution image, and subsequently uses CAD software to divide the image into panels that correspond to the sail's physical construction (’618 Patent, col. 4:6-65, FIG. 1). This process accounts for the sail’s three-dimensional curvature and the need for overlapping seams, allowing a complex image to be printed across multiple fabric panels and then sewn together to form a continuous, coherent graphic on a fully functional sail (’618 Patent, col. 4:35-39, col. 4:61-65).
- Technical Importance: This process claims to enable the production of sails featuring high-resolution, full-color raster images while retaining the sail's original performance characteristics, opening a new avenue for artistic expression and high-impact marketing in the sailing industry (’618 Patent, col. 2:55-67).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (Compl. ¶28).
- The essential elements of Claim 1 include:
- identifying the size and shape of the wind-catching fabric;
- selecting at least one image to print;
- using image editing software to size the image to the fabric's proportions;
- using image editing software to edit and prepare the image for three-dimensional software editing;
- exporting a two-dimensional copy of the image from the software;
- importing a three-dimensional image file with all geometric features of the fabric, including a 1:1 dimension ratio and curvature;
- importing the two-dimensional image copy onto the three-dimensional image file;
- defining the size of panels to include overlapping sections and margins;
- placing key lines on the image;
- exporting the panels as individual digital image files;
- printing the image files onto the fabric using a large-format digital printer to form printed panels;
- cutting the printed panels; and
- sewing the panels together with a sailmaker's loom.
- The complaint does not explicitly reserve the right to assert dependent claims, but infringement allegations are made as to the "Asserted Claims" generally (Compl. ¶36).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the method used by Defendant Precision Sails to make, use, sell, and offer for sale its customized sails that feature printed graphics, as depicted on its websites (Compl. ¶32).
Functionality and Market Context
The complaint alleges that Precision Sails provides custom sails with high-resolution images to customers, including those in the Northern District of California (Compl. ¶11, ¶13). The complaint alleges this is accomplished by performing all the steps of the asserted claims (Compl. ¶36). The complaint provides visual evidence, in the form of photographs of a sail produced by the patented method, to illustrate the result of the process (Compl. ¶30, Ex. 9). One such photograph in Exhibit 9 depicts a large sail with a complex graphical image, marked with the phrase "patent pending," at a marine event (Compl. ¶19, ¶30). The complaint does not provide specific details on the technical operation of Precision Sails' internal manufacturing process beyond the general allegation that it practices the claimed method.
IV. Analysis of Infringement Allegations
’618 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for printing high-resolution images to wind-catching fabrics without compromising the performance of the wind-catching fabrics comprising: | The complaint alleges on information and belief that Defendant performs a method of making, using, and selling sails with printed images that infringes Claim 1. | ¶32, ¶36 | col. 7:47-50 |
| identifying the size and shape of the wind-catching fabric; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 7:51-52 |
| selecting at least one image to print to the wind-catching fabric; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 7:53-54 |
| using image editing software to size the image to the proportions of the wind-catching fabric; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 7:55-57 |
| using image editing software to edit and prepare the image for three-dimensional software editing; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 7:58-60 |
| exporting a two-dimensional copy of the at least one image from the image editing software; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 8:1-3 |
| importing a three-dimensional image file with all geometric features of the wind-catching fabric, including a 1:1 dimension ratio and curvature of the wind-catching fabric; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 8:4-8 |
| importing the two-dimensional copy of the at least one image on the three-dimensional image file corresponding to the dimensions of the wind-catching fabric; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 8:9-12 |
| defining the size of the panels to include overlapping sections and margins for printing; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 8:13-15 |
| placing key lines on the at least one image; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 8:16 |
| exporting the panels as individual digital image files; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 9:1 |
| printing the image of the individual digital image files to the wind-catching fabric using a large-format digital printer, forming printed panels; | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 9:2-5 |
| cutting the printed panels; and | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 9:6 |
| sewing the panels together with a sailmaker's loom. | The complaint alleges Defendant performs this step as part of its infringing process. | ¶36 | col. 9:7-8 |
Identified Points of Contention
- Evidentiary Questions: The complaint makes general allegations that Defendant performs each step of the claimed method, but it does not provide specific factual support for how Defendant performs the highly detailed software-based steps (e.g., exporting a 2D file, importing it into a 3D file with specific geometric features). The case may depend on what evidence is produced in discovery to substantiate these "information and belief" allegations.
- Technical Questions: A key question will be whether Defendant’s actual process includes every claimed step. For example, does Defendant's process involve the specific sequence of exporting a 2D copy of an image and then importing that 2D copy onto a separate 3D image file, or does it use a more integrated software solution? Does Defendant use what is technically considered a "sailmaker's loom" as described in the patent (’618 Patent, col. 7:21-26)?
- Scope Questions: The complaint alleges infringement by making, using, and selling products in the U.S. (Compl. ¶32, ¶36). As the Defendant is a Canadian corporation, a factual dispute may arise regarding where each step of the accused multi-step method claim is actually performed and whether all steps are attributable to a single actor within the United States, as required for direct infringement under 35 U.S.C. § 271(a).
V. Key Claim Terms for Construction
The Term: "three-dimensional image file with all geometric features of the wind-catching fabric, including a 1:1 dimension ratio and curvature"
- Context and Importance: This term is highly specific and appears central to the patent's described digital workflow. The infringement analysis will likely turn on whether the accused process uses a file that meets this precise definition. Practitioners may focus on this term because it links the graphical manipulation to the physical, three-dimensional reality of the sail's design.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification mentions using specialty sailmaker software like "ProSail™ or SailPack™" to custom design the sail, from which a ".dwf 2-dimensional file is exported" (’618 Patent, col. 4:9-14, col. 4:26-27). A party might argue that any file format that functionally represents the sail's geometry, as generated by common sail design software, should fall within the claim's scope.
- Evidence for a Narrower Interpretation: The claim language is quite detailed, requiring "all geometric features," a "1:1 dimension ratio," and "curvature." A party could argue this requires a complete and precise digital twin of the sail, not just a simplified design file. The specification’s reference to importing this file into "Autocad™ program" (’618 Patent, col. 4:28-29) could be used to argue the term is limited to the types of detailed engineering files compatible with such software.
The Term: "sailmaker's loom"
- Context and Importance: This is the final assembly step of the claimed method. The definition will be critical to determining if Defendant's assembly process infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue the term should be understood broadly to mean any sewing equipment used by a sailmaker to join panels. The claim itself simply requires "sewing the panels together with a sailmaker's loom" (’618 Patent, col. 9:7-8).
- Evidence for a Narrower Interpretation: The specification provides a specific definition: "The sail maker's loom is specially designed for large scale industrial sewing projects. The loom includes a long stationary sewing table with a traveling, self propelled sewing machine head, affording the straightest seams possible" (’618 Patent, col. 7:21-26). A party will likely argue that infringement requires use of a machine with these specific characteristics, not just any sewing machine.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement under 35 U.S.C. § 271(b), stating that Defendant knowingly induces customers and retailers to use the Accused Products by promoting them online and providing instructions or manuals (Compl. ¶40-41). It also alleges contributory infringement under § 271(c) based on the use and/or importation of the Accused Products (Compl. ¶42).
- Willful Infringement: Willfulness is alleged based on Defendant’s purported knowledge of the patent family prior to the suit (Compl. ¶39). The complaint alleges Defendant had actual knowledge of the parent ’500 application as early as 2021 and was further notified via emails and letters in 2022 and 2023 (Compl. ¶22-25).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of evidentiary proof: Can the Plaintiff, through discovery, produce evidence that the Defendant’s internal manufacturing process practices every single step of the highly specific, multi-stage method recited in Claim 1, particularly the detailed sequence of software file manipulations?
- The case will also involve a core question of claim construction: Can the term "sailmaker's loom" be interpreted broadly to cover standard industrial sewing machines, or is it limited to the specific "traveling, self propelled sewing machine head" described in the patent's specification?
- A significant jurisdictional and factual question will be one of territoriality: Given that the Defendant is a Canadian company, what evidence shows that all steps of the asserted method claim were performed or controlled by a single entity within the United States, as necessary to prove direct infringement?