Image Pro Solutions LLC v. Lightform Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Image Pro Solutions LLC (Delaware)
  • Defendant: Lightform, Inc. (Delaware)
  • Plaintiff’s Counsel: Insight, PLC; Ni, Wang & Massand, PLLC
• Case Identification: 4:23-cv-02679, N.D. Cal., 05/30/2023
• Venue Allegations: Plaintiff alleges venue is proper in the Northern District of California because Defendant’s principal place of business is in San Francisco and it maintains a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s projection mapping hardware and software infringe five patents related to methods for projecting distortion-corrected imagery onto three-dimensional and non-coplanar surfaces.
• Technical Context: The technology at issue is projection mapping, a technique used to turn complex physical objects and architectural facades into display surfaces for video projection, with applications in art, advertising, and entertainment.
• Key Procedural History: The asserted patents originate with Klip Collective, Inc., an entity described as a pioneer in immersive projections. Plaintiff asserts ownership of the patents by assignment. The complaint does not reference any prior litigation or administrative proceedings involving the patents-in-suit.

Case Timeline

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,407,297 - "Image Projection System and Method," Issued Aug. 5, 2008

The Invention Explained

• Problem Addressed: The patent’s background section describes the problem of optical distortion that occurs when projecting images onto complex surfaces such as those that are curved, angled, or non-coplanar, a limitation that traditionally confined projectors to simple flat screens (’297 Patent, col. 1:33-45).
• The Patented Solution: The invention proposes a method where a user projects a digital shape, or "matte," from a computer’s video compositing software onto a real-world object or architecture. The user then adjusts the matte’s properties (e.g., size, shape, skew) within the software in real time, while visually observing the projection, until the projected matte perfectly aligns with the physical surface. This process effectively creates a digital map of the physical space, allowing imagery to be subsequently projected within the aligned matte without distortion (’297 Patent, Abstract; col. 4:5-18).
• Technical Importance: This technique provides a user-friendly method for creating immersive visual experiences on complex three-dimensional structures from a single projection source (Compl. ¶¶ 13, 16).

Key Claims at a Glance

• The complaint asserts independent method claim 1 (Compl. ¶29).
• The essential elements of claim 1 include:
  • inserting a matte into the composition window, an image of the matte being projected onto the architecture; and
  • adjusting the size, shape, position, orientation or any combination thereof of the matte within the composition window until edges of the projected image of the matte become aligned with edges of one of the desired surfaces of the architecture.
• The complaint also asserts dependent claims 2-20 (Compl. ¶30).

U.S. Patent No. 8,632,192 - "Image Projection Kit and Method and System Of Distributing Image Content For Use With The Same," Issued Jan. 21, 2014

The Invention Explained

• Problem Addressed: This patent, part of the same family as the ’297 Patent, addresses the same foundational problem of distortion in projection mapping (’192 Patent, col. 1:40-49).
• The Patented Solution: The invention is directed to both a method of projection mapping and a commercial ecosystem for it. The patent describes a kit containing hardware and software for performing the projection mapping method, and also discloses a system for distributing "projection clip files" to users from a server, authenticating users, and charging fees for downloaded content (’192 Patent, Abstract; col. 3:36-66).
• Technical Importance: This patent describes a framework for commercializing not just the projection mapping technology itself, but also the artistic content used with it (Compl. ¶11).

Key Claims at a Glance

• The complaint asserts independent method claim 7 (Compl. ¶36).
• The essential elements of claim 7 include:
  • identifying a projection location from which a line of sight exists to one or more desired surfaces of the architecture;
  • securing a projection device in a fixed orientation at the projection location;
  • projecting content of a composition window onto the architecture;
  • inserting a matte into the composition window; and
  • adjusting the matte within the composition window until edges of the projected image of the matte become aligned with edges of one of the desired surfaces of the architecture.

Multi-Patent Capsule: U.S. Patent No. 9,560,307

• Patent Identification: U.S. Patent No. 9,560,307, "Image Projection Kit and Method and System Of Distributing Image Content For Use With The Same," Issued Jan. 31, 2017.
• Technology Synopsis: The patent claims a method for projecting imagery onto non-coplanar surfaces by viewing and adjusting one or more digital "mattes" on a display, with a coupled projector reflecting those adjustments in real time to align the projected image with the physical surfaces (’307 Patent, Abstract). The complaint states the patent generally covers a method for projecting imagery onto a plurality of non-coplanar surfaces (Compl. ¶40).
• Asserted Claims: Independent claim 1 (Compl. ¶42).
• Accused Features: The complaint alleges the Accused Instrumentalities practice the claimed method (Compl. ¶42).

Multi-Patent Capsule: U.S. Patent No. 10,084,998

• Patent Identification: U.S. Patent No. 10,084,998, "Image Projection Kit and Method and System Of Distributing Image Content For Use With The Same," Issued Sep. 25, 2018.
• Technology Synopsis: Continuing the technological theme of the patent family, this patent claims a method of projecting imagery by displaying a matte, adjusting its projected image to conform to a surface by manipulating the matte on the display, associating imagery with the matte, and projecting that imagery (’998 Patent, Abstract). The complaint alleges it generally covers a method of projecting imagery (Compl. ¶47).
• Asserted Claims: Independent claim 1 (Compl. ¶49).
• Accused Features: The complaint alleges the Accused Instrumentalities practice the claimed method (Compl. ¶49).

Multi-Patent Capsule: U.S. Patent No. 10,567,718

• Patent Identification: U.S. Patent No. 10,567,718, "Image Projection Kit and Method and System Of Distributing Image Content For Use With The Same," Issued Feb. 18, 2020.
• Technology Synopsis: The patent claims a method of projecting imagery by displaying a matte on a computer, adjusting it until its projected image aligns with the perimeter of a physical surface, and then associating imagery content with that aligned matte (’718 Patent, Abstract). The complaint alleges it generally covers a method of projecting imagery (Compl. ¶54).
• Asserted Claims: Independent claim 2 (Compl. ¶56).
• Accused Features: The complaint alleges the Accused Instrumentalities practice the claimed method (Compl. ¶56).

III. The Accused Instrumentality

• Product Identification: The complaint identifies the "Accused Instrumentalities" as various Lightform projector models and kits, including the LF2+ AR Projector and the LFC Kit, operating with the Lightform Creator design software (Compl. ¶21). Legacy products are also accused (Compl. ¶21, fn. 1).
• Functionality and Market Context: The Accused Instrumentalities are described as "design tools for projection mapping" (Compl. ¶21). The complaint provides a visual from Defendant's website outlining a three-step "Lightform Workflow": 1. Scan, 2. Create, and 3. Publish (Compl. p. 5). The "Scan" step uses structured light to create a "precise alignment between the real & digital worlds" (Compl. p. 5). The "Create" step uses the Creator software, which allows users to define "surfaces" that mask parts of the real world and apply visual effects with real-time feedback (Compl. ¶24). The LFC Kit includes hardware components such as a compute device, a camera, and mounts to be used with a third-party projector (Compl. ¶23; Compl. p. 6).

IV. Analysis of Infringement Allegations

The complaint references exemplary infringement charts as exhibits for each asserted patent, but these exhibits were not filed with the complaint. The infringement theory is therefore summarized from the complaint’s narrative allegations.

• Infringement Theory Summary for the ’297 Patent: The complaint alleges that Defendant and its customers directly infringe at least method claim 1 by using the Accused Instrumentalities (Compl. ¶¶28-29). The narrative suggests that the "Create" step of the Lightform Workflow, where users define and edit "surfaces" in the Creator software to mask parts of the real world, meets the claim limitation of "inserting a matte into the composition window" (Compl. ¶24; Compl. p. 5). The subsequent use of software tools like "perspective warp" with "real-time feedback" to make the digital surface conform to the physical object is alleged to meet the limitation of "adjusting the size, shape, position, orientation" of the matte until its projection is aligned with the physical surface (Compl. ¶24).

• Infringement Theory Summary for the ’192 Patent: The complaint alleges that Defendant and its customers directly infringe at least method claim 7 (Compl. ¶¶35-36). The allegations map to the accused workflow: a user sets up the Lightform device at a physical location, satisfying the "identifying a projection location" and "securing a projection device" steps (Compl. ¶¶22-23). The Creator software interface functions as the "composition window," and the process of defining and editing "surfaces" to align with the scanned environment is alleged to meet the "inserting a matte" and "adjusting the matte" limitations, as described for the ’297 Patent (Compl. ¶24).

• Identified Points of Contention:

  • Scope Questions: A central question may be whether the claim term "matte," described in the patents’ specification in the context of traditional 2D video compositing software, can be construed to read on the "surfaces" generated within Defendant’s proprietary software, which operates based on a 3D scan of the environment.
  • Technical Questions: The complaint describes the accused workflow beginning with a "Scan" using structured light to achieve a "precise alignment" (Compl. p. 5). The patent specifications, in contrast, describe a manual, iterative process where a user "visually observ[es] the real time effect" of adjustments to achieve alignment (’297 Patent, col. 6:52-56). This raises the question of whether an automated or semi-automated scanning and mapping process meets the claim limitations requiring a user to "adjust" a matte until it is aligned.

V. Key Claim Terms for Construction

• The Term: "matte"

  • Context and Importance: This term defines the fundamental digital object that is manipulated to map the physical world. The infringement analysis may depend on whether Defendant's scan-generated "surfaces" fall within the scope of this term. Practitioners may focus on this term because the patents' examples are rooted in conventional 2D video software, whereas the accused technology is based on 3D scanning.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The Abstract of the ’297 Patent describes the invention broadly as projecting "an image of a matte displayed on a display device," without limiting the matte to a specific software context. The claims use the general term "composition window," which could be argued to cover any graphical user interface for visual design.
    • Evidence for a Narrower Interpretation: The specification of the ’297 Patent repeatedly references Adobe® After Effects® as an exemplary "video compositing software application" (’297 Patent, col. 4:37-39). Figures 4A-7A depict the mattes as simple 2D geometric shapes inserted into a conventional software interface, which could support an argument that the term does not extend to complex 3D meshes generated from a structured light scan.

• The Term: "adjusting... until the projected images of the mattes... are aligned"

  • Context and Importance: This phrase recites the core alignment process. Its construction will determine whether the claims require a manual, iterative, visual-feedback-driven process, or if they can also cover an automated alignment achieved through a 3D scan.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself is functional, requiring the result of alignment without specifying the exact means. A plaintiff might argue that any user-initiated process, including a one-click scan, that results in an aligned matte constitutes "adjusting."
    • Evidence for a Narrower Interpretation: The specification describes a hands-on process: "the user then begins to adjust the size, shape, position... visually observing the real time effect that such adjustments have on the location and orientation of the edges of the projected images" (’297 Patent, col. 6:49-56). This language may support a construction requiring an iterative, manual feedback loop that is distinct from an automated scanning process.

VI. Other Allegations

• Indirect Infringement: The complaint does not plead separate counts for indirect infringement. The allegations focus on direct infringement by Defendant (e.g., through internal testing) and by its end-user customers (Compl. ¶¶ 28, 29, 35, 36).
• Willful Infringement: The complaint alleges that Defendant has had knowledge of its infringement "since at least the filing of the Complaint" (Compl. ¶19). The prayer for relief requests enhanced damages based on willful infringement, suggesting a theory based on post-filing conduct (Compl. p. 12, ¶ B).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of definitional scope: can the term "matte," which is rooted in the patents’ context of 2D video compositing software, be construed to cover the three-dimensional, scan-derived "surfaces" that are created and manipulated in the accused system?
• A key evidentiary question will be one of process equivalence: does the accused products' automated "Scan" workflow, which uses structured light to map a scene, satisfy the patent claims' requirement for a user to "adjust" a matte until it is "aligned," a process the specification describes as a manual, visual, and iterative task?
• A further question will involve claim differentiation: with five patents from the same family asserted, the court will need to determine whether the subtle variations in the wording of the independent claims create distinct scopes of infringement or if the infringement analysis for all five patents will rise and fall together on the construction of the core technical terms.