DCT
3:23-cv-00722
Mothers Of Modernization LLC v. Corel Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Mothers of Modernization LLC (California)
- Defendant: Corel Corp (Canada)
- Plaintiff’s Counsel: Insigne LLP
- Case Identification: 3:23-cv-00722, S.D. Cal., 04/19/2023
- Venue Allegations: Venue is asserted on the basis that Defendant is a foreign corporation subject to personal jurisdiction within the district, and that a substantial part of the events giving rise to the infringement claims occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s CorelDRAW software, which includes collaborative commenting features, infringes two patents related to methods for associating user messages with file revisions in a networked, synchronized environment.
- Technical Context: The technology at issue pertains to integrating communication workflows directly into cloud-based file sharing and collaboration platforms to create a contextual and preserved history of revisions and comments.
- Key Procedural History: Plaintiff acquired the patents-in-suit from the original applicant, Green Room Networks ("GRN"), which the complaint states was a startup that ceased operations after larger companies integrated similar technology. The complaint notes that during the prosecution of the '119 patent, the patent office considered the patent eligibility framework from Alice Corp. before allowance. Plaintiff alleges it provided Defendant with notice of the alleged infringement, including claim charts, beginning on March 3, 2022, but that licensing discussions were unsuccessful.
Case Timeline
| Date | Event |
|---|---|
| 2012-07-17 | Priority Date for '119 and '332 Patents |
| 2016-01-12 | U.S. Patent No. 9,237,119 Issued |
| 2017-11-28 | U.S. Patent No. 9,830,332 Issued |
| 2020-03-01 | Alleged first sale of Accused Product with infringing features |
| 2022-03-03 | Plaintiff's first notice of infringement letter to Defendant |
| 2023-04-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,237,119, “File-Attendant Messaging” (Issued Jan. 12, 2016)
The Invention Explained
- Problem Addressed: The patent's background section identifies the inefficiency of using separate communication channels, such as email or text messages, to discuss changes to files in cloud storage systems. This practice results in a "morass of electronic communications" that is difficult to search and disconnected from the file's revision history (’119 Patent, col. 2:22-33).
- The Patented Solution: The invention proposes a method where, upon detecting the creation or revision of a data file on one device, the system prompts the user to enter an associated message. This "file-attendant" message is then communicated to other collaborators' devices along with the data needed to synchronize the file, creating an integrated and contextual communication history tied directly to the file's lifecycle (’119 Patent, Abstract; col. 2:10-25).
- Technical Importance: The patent describes this approach as a "tremendous step forward in collaborative data sharing, effecting communications naturally and intuitively in a way that preserves a meaningful and readily available history of file creation and revision" (’119 Patent, col. 2:47-51).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 and dependent claims 2-9 (Compl. ¶27).
- Independent Claim 1 recites a method comprising the essential elements of:
- Detecting the creation or revision of a data file in a first computing device.
- In response, identifying other devices for synchronization and prompting the user of the first device to specify a message associated with the file creation/revision.
- Receiving the specified message.
- Communicating the message to the other devices along with information to enable file synchronization.
- Plaintiff reserves the right to assert additional claims (Compl. ¶30).
U.S. Patent No. 9,830,332, “File-Attendant Messaging” (Issued Nov. 28, 2017)
The Invention Explained
- Problem Addressed: The '332 patent, a continuation of the application leading to the '119 patent, addresses the same problem of disjointed communications in collaborative, cloud-based file-sharing environments (’332 Patent, col. 2:10-33).
- The Patented Solution: This patent claims a more specific method, triggered by receiving two distinct user inputs on a first device: one "specifying a revision to a section of a data file" and another "specifying closure of the data file." It is in response to the "closure" input that the system prompts the user for a message, which is then communicated to other users along with the revision data (’332 Patent, Claim 1).
- Technical Importance: This refined method aims to tie messaging to a more discrete and intentional user action—concluding an editing session—to further streamline the collaborative workflow (’332 Patent, col. 2:49-54).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 and dependent claims 2-11 (Compl. ¶37).
- Independent Claim 1 recites a method comprising the essential elements of:
- Receiving user-input specifying a revision to a section of a data file and user-input specifying closure of the data file.
- In response to the closure input, identifying other devices for synchronization and prompting the user to specify a message associated with the revised section.
- Receiving the specified message.
- Communicating the message to other devices along with information to enable synchronization of the revised section.
- Plaintiff reserves the right to assert additional claims (Compl. ¶40).
III. The Accused Instrumentality
Product Identification
- Corel's CorelDRAW software, particularly versions incorporating the "Comments inspector feature" (Compl. ¶16, ¶19).
Functionality and Market Context
- The complaint describes the Accused Product as a "cloud-based software suite" that allows users to collaborate on design projects (Compl. ¶16, ¶27). Its functionality includes allowing users to upload designs to the cloud, share links with reviewers, and have reviewers add comments and annotations (Compl. ¶28). These annotations "appear instantly in the file you have open in CorelDRAW," and notifications of changes are sent to other users in real-time (Compl. ¶16, ¶28). A screenshot from a "CorelDRAW Webinar" depicts a user interface with a "Comments" panel containing a text entry field labeled "Type comment here" (Compl. p. 6, FIG. 2 of '119 patent).
- The complaint alleges the collaboration workflow is a key feature, marketed as a way to "accelerate your creative process," and that the software is "Trusted by millions" with a user base of over 2.5 million (Compl. ¶6:24-26, ¶33).
IV. Analysis of Infringement Allegations
’119 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| detecting creation/revision of a data file in a first computing device within the networked computing system; | A user adding comments or annotations to a shared design file within the CorelDRAW software suite (Compl. ¶27). | ¶27 | col. 5:15-18 |
| in response to detecting the data file creation/revision, identifying one or more other computing devices within the networked computing system in which the data file creation/revision is to be synchronized and prompting a user of the first computing device to specify a message... | The CorelDRAW GUI prompts a user to "Type here" in a comment box "immediately after a revision is applied" (Compl. ¶18). | ¶17, ¶18 | col. 5:21-28 |
| receiving the message specified by the user of the first computing device; and | The system receives the comments and annotations entered by reviewers into the design file (Compl. ¶28). | ¶28 | col. 5:29 |
| communicating the message to the one or more other computing devices together with information that enables the data file creation/revision to be synchronized within the one or more other computing devices. | Comments and markup appear "instantly" for other users, and the file and any changes are synchronized over the cloud and are accessible by various devices (Compl. ¶27, ¶28). | ¶27, ¶28 | col. 5:30-34 |
- Identified Points of Contention:
- Scope Questions: Does the act of "adding comments or annotations" constitute a "revision of a data file" as required by the claim? A court may need to determine if this limitation is met by changes to file metadata, as opposed to changes to the underlying file content itself.
- Technical Questions: What is the nature of the "prompting" in the accused system? The infringement allegation may depend on whether the system presents a comment field in response to a revision, or if the comment field is a persistent UI element that is always available, which may challenge the causal link required by the claim.
’332 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving, within in a first computing device in the networked computing system, user-input specifying a revision to a section of a data file and user-input specifying closure of the data file; | The complaint alleges that adding comments or annotations constitutes "user input specifying a revision" and that posting the comment or sending a file link constitutes "user-input specifying closure." | ¶37 | col. 5:22-26 |
| in response to the user-input specifying closure of the data file, identifying one or more other computing devices... and prompting a user of the first computing device to specify a message to be communicated... in association with the revised section of the data file; | The complaint points to the general collaborative workflow where users can add comments and annotations in real time. | ¶38 | col. 5:27-35 |
| receiving the message specified by the user of the first computing device; and | The system receives the comments and suggestions entered by reviewers. | ¶38 | col. 5:36-37 |
| communicating the message to the one or more other computing devices together with information that enables the revision to the section of the data file to be synchronized within the one or more other computing devices. | Comments and markups appear instantly for other users, and changes are synchronized across devices via the cloud. | ¶38 | col. 5:38-43 |
- Identified Points of Contention:
- Scope Questions: The central point of contention for this patent will likely be the term "user-input specifying closure of the data file". The complaint's assertion that this is met by "posting a comment or sending a file link" (Compl. ¶10:28-p.11:1) raises the question of whether this interpretation aligns with the term's meaning in the context of the patent. The claim requires two distinct inputs (revision and closure), and it is not clear from the complaint how the accused product's workflow separates these actions.
- Technical Questions: Does the accused system's workflow follow the specific sequence mandated by the claim: (1) receive revision input, (2) receive closure input, and then (3) prompt for a message in response to the closure input? The complaint's description of the accused product's functionality does not explicitly detail such a sequence.
V. Key Claim Terms for Construction
For the '119 Patent:
- The Term: "detecting creation/revision of a data file"
- Context and Importance: This term serves as the trigger for the entire claimed method. The viability of the infringement allegation hinges on whether adding a comment or annotation, as alleged in the complaint, falls within the scope of this term. Practitioners may focus on this term because if adding a comment is not a "revision," the accused functionality may not practice the first step of the claim.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's goal is to improve collaborative communication; one could argue that any user action that prompts a need for communication about a file, including adding a comment, could be considered a "revision" in this context.
- Evidence for a Narrower Interpretation: The claim language links the "creation/revision" to a subsequent synchronization step (’119 Patent, col. 5:31-34). This could suggest that a "revision" must be a change to the file content that requires synchronization, not merely the addition of metadata like a comment.
For the '332 Patent:
- The Term: "user-input specifying closure of the data file"
- Context and Importance: This term is critical because it distinguishes the '332 Patent's claims from the earlier '119 Patent and forms the basis of a potential non-infringement argument. The complaint's theory that "posting a comment" satisfies this limitation is a significant interpretive step.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not appear to provide an explicit definition of "closure." A plaintiff could argue that in a modern, real-time collaborative application, an action that finalizes a piece of feedback, like posting a comment, serves the functional purpose of "closure" for that specific interaction.
- Evidence for a Narrower Interpretation: The plain meaning of "closure" implies an action that concludes an editing session, such as saving and closing a file or exiting an editing mode. The claim structure requires two separate user inputs—one for "revision" and one for "closure"—which may suggest that a single action like posting a comment cannot satisfy both.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement for both patents. It asserts that Corel, through its "installation guide and instruction manual," provides instructions on how to use the allegedly infringing features (e.g., setting permissions, receiving notifications, synchronizing files) and thus directs its customers to perform the patented methods (Compl. ¶31, ¶41).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge. The complaint states that Corel was put on notice of its alleged infringement of the Asserted Patents on March 3, 2022, via a letter that included "exemplary claim charts" (Compl. ¶20). The complaint alleges that Corel continued its allegedly infringing conduct despite this knowledge (Compl. ¶32, ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the phrase "user-input specifying closure of the data file" in the '332 patent, which suggests a discrete action to end an editing session, be construed to cover the act of "posting a comment" within a real-time collaboration workflow?
- A key evidentiary question will be one of causal sequence: does the accused CorelDRAW system "prompt" a user for a message "in response to detecting" a file revision, as required by Claim 1 of the '119 patent, or does the user interface simply provide a persistent, always-available field for adding comments that is independent of a specific revision event?
- A central technical dispute may focus on a potential functional mismatch: does the accused product's general-purpose commenting feature, where a single user action might be characterized as both a "revision" and a "message," map to the specific, multi-step sequences recited in the asserted claims, which appear to separate the act of revision from the act of being prompted for and entering a message?