DCT
1:10-cv-01834
Public Patent Foundation Inc v. Adobe Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Public Patent Foundation, Inc. (New York)
- Defendant: Adobe Systems Inc. (Delaware)
- Plaintiff’s Counsel: Public Patent Foundation, Inc.
- Case Identification: 1:10-cv-01834, S.D.N.Y., 03/09/2010
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Defendant maintains a regular place of business and sells and distributes software products within the district.
- Core Dispute: Plaintiff alleges that Defendant engaged in false patent marking in violation of 35 U.S.C. § 292 by marking its Adobe Reader software with expired and inapplicable patent numbers with the intent to deceive the public.
- Technical Context: The dispute centers on patent markings within Adobe Reader, a ubiquitous software application for viewing, creating, and managing Portable Document Format (PDF) files.
- Key Procedural History: The complaint notes that Defendant was sued for false marking on December 30, 2009, by a different entity (San Francisco Technology Inc.) in the Northern District of California, which allegedly put Defendant on notice of marking its products with certain expired patents.
Case Timeline
| Date | Event |
|---|---|
| 1991-06-05 | U.S. Patent No. 5,185,818 Priority Date |
| 1993-02-09 | U.S. Patent No. 5,185,818 Issues |
| 1994-08-31 | U.S. Patent No. 5,625,711 Priority Date |
| 1997-04-29 | U.S. Patent No. 5,625,711 Issues |
| 2005-01-01 | Defendant begins distributing Adobe Reader Version 7 (approx. date) |
| 2006-10-01 | Defendant begins distributing Adobe Reader Version 8 (approx. date) |
| 2008-06-01 | Defendant begins distributing Adobe Reader Version 9 (approx. date) |
| 2009-12-30 | San Francisco Technology Inc. files false marking suit against Defendant |
| 2010-02-16 | Defendant begins distributing Adobe Reader Version 9.3.1 |
| 2010-03-09 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,185,818 - "METHOD OF SUBSTITUTING FONTS AND DISPLAYING CHARACTERS"
- Patent Identification: U.S. Patent No. 5,185,818, "METHOD OF SUBSTITUTING FONTS AND DISPLAYING CHARACTERS," issued February 9, 1993 (’818 Patent).
The Invention Explained
- Problem Addressed: The patent addresses the problem that occurs when a digital document is viewed on a computer that lacks the specific fonts used to create it, which can disrupt the document’s layout and appearance (Compl. ¶30; ’818 Patent, col. 1:21-34).
- The Patented Solution: The invention provides a method for reconstructing characters from a document by substituting them with characters from a different, available font. The key aspect of the solution is that the substituted characters are constructed to have the same width as the original characters, thereby preserving the document’s layout and creating an "aesthetically pleasing" result (’818 Patent, col. 2:1-12, Abstract). This process continues character-by-character until the document is fully reconstructed for display or printing.
- Technical Importance: This technology was significant for ensuring document portability and fidelity across different computer systems at a time when font management was a considerable technical challenge.
Key Claims at a Glance
- The complaint asserts that independent claim 1 is inapplicable to the accused product (Compl. ¶¶ 32-33).
- Claim 1 breaks down into the following essential elements:
- A method for reconstructing characters in a document from one or more fonts to a different font.
- Selecting a first character and determining its width.
- Substituting the first character with the same character constructed from the different font, but having the same width as the first character.
- Continuing this construction and substitution for each character needing reconstruction.
- Creating a reconstructed document with an aesthetically pleasing relationship among characters.
- Storing the reconstructed document for subsequent display.
U.S. Patent No. 5,625,711 - "METHOD AND APPARATUS FOR PRODUCING A HYBRID DATA STRUCTURE FOR DISPLAYING A RASTER IMAGE"
- Patent Identification: U.S. Patent No. 5,625,711, "METHOD AND APPARATUS FOR PRODUCING A HYBRID DATA STRUCTURE FOR DISPLAYING A RASTER IMAGE," issued April 29, 1997 (’711 Patent).
The Invention Explained
- Problem Addressed: The patent describes the challenge of efficiently storing and manipulating digitized images, particularly those containing text. High-level coded representations (like ASCII) are compact, but processes like Optical Character Recognition (OCR) are imperfect and may fail to recognize some parts of an image (’711 Patent, col. 1:8-29).
- The Patented Solution: The invention proposes a "hybrid data structure" that combines both coded and non-coded data. An OCR process attempts to detect "identifiable objects" (e.g., text) in an input bitmap. These are stored as efficient, coded data. Portions of the bitmap that are not recognized are stored as non-coded bitmap data (’711 Patent, col. 2:29-37, Abstract). When displayed, the system renders new images from the coded data and uses the original bitmap data for the non-coded portions, creating a visually complete and seemingly perfect document.
- Technical Importance: This approach allows for the efficiency of coded text representation while preserving the full visual information of the original document, even when OCR is not 100% successful.
Key Claims at a Glance
- The complaint asserts that independent claims 1, 3, 4, and 5 are inapplicable to the accused product (Compl. ¶¶ 39, 42, 45, 48).
- Claim 1, a system claim, breaks down into the following essential elements:
- A data processing apparatus.
- Means for performing recognition on an input bitmap to detect identifiable objects.
- Means for creating a hybrid data structure including coded portions (for identifiable objects) and non-coded portions (derived from the bitmap for non-identifiable objects).
- An output device for developing a visually perceptible raster image from the hybrid data structure.
- Claims 3, 4, and 5 recite related methods for producing such a hybrid data structure.
U.S. Patent No. 5,729,637 - "METHOD AND APPARATUS FOR PRODUCING A HYBRID DATA STRUCTURE FOR DISPLAYING A RASTER IMAGE"
- Multi-Patent Capsule:
- Patent Identification: U.S. Patent No. 5,729,637, "METHOD AND APPARATUS FOR PRODUCING A HYBRID DATA STRUCTURE FOR DISPLAYING A RASTER IMAGE," issued March 17, 1998 (’637 Patent).
- Technology Synopsis: This patent is related to the ’711 Patent and describes a system for producing and displaying an image from a hybrid data structure. It includes specific means for displaying an "editing window" where the data structure can be changed, allowing a user to interact with and modify the coded portions of the document (Compl. ¶53).
- Asserted Claims: Independent claims 1, 2, and 3 (Compl. ¶¶ 54, 57, 60).
- Accused Features: The complaint alleges that Adobe Reader does not practice the claimed methods and systems for producing and displaying images from such a hybrid data structure (Compl. ¶¶ 54, 57, 60, 62).
III. The Accused Instrumentality
Product Identification
- The accused product is the software known as Adobe Reader, specifically identified as Versions 7, 8, and 9, including Version 9.3.1 (Compl. ¶¶ 11, 14, 16, 18, 21).
Functionality and Market Context
- The complaint describes Adobe Reader as a software product distributed via the Internet, which is installed on recipient computers (Compl. ¶¶ 11, 13). The complaint includes a screenshot of the "Patent and Legal Notices" window from Adobe Reader Version 7.05, which lists numerous U.S. patents (Compl. ¶15, p. 5).
- The complaint alleges that Defendant has distributed millions of copies of Adobe Reader and that the product is significant enough to warrant patent marking designed to deter potential competitors from developing competing PDF-enabled software (Compl. ¶¶ 12, 490).
IV. Analysis of Infringement Allegations
The core of the complaint is an allegation of non-infringement for the purpose of a false marking claim. The following table summarizes the Plaintiff's conclusory allegations that the accused product does not meet the patent claims.
’818 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Basis for Non-Applicability | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method for reconstructing characters in a document...to convert said characters to a different font... | The complaint alleges this method is not covered by Adobe Reader but provides no specific technical basis for this assertion. | ¶33 | col. 6:40-45 |
| selecting a first character from said document determining the width of said first character; | The complaint alleges this step is not performed by Adobe Reader but provides no specific technical basis for this assertion. | ¶33 | col. 6:46-47 |
| substituting for said first character the same character constructed from said different font and having the same width as said first character... | The complaint alleges this substitution is not performed by Adobe Reader but provides no specific technical basis for this assertion. | ¶33 | col. 6:49-56 |
| continuing the construction and substitution...until all the characters in said document needing reconstruction have been substituted... | The complaint alleges this continuing step is not performed by Adobe Reader but provides no specific technical basis for this assertion. | ¶33 | col. 6:57-62 |
| storing said reconstructed document for subsequent display. | The complaint alleges this storage step is not performed by Adobe Reader but provides no specific technical basis for this assertion. | ¶33 | col. 6:66-68 |
’711 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Basis for Non-Applicability | Complaint Citation | Patent Citation |
|---|---|---|---|
| A system for producing a raster image derived from a hybrid data structure including coded and non-coded portions... | The complaint alleges this system is not practiced by Adobe Reader but provides no specific technical basis for this assertion. | ¶39 | col. 2:37-40 |
| (b) means for performing recognition on an input bitmap...to detect identifiable objects... | The complaint alleges Adobe Reader does not have or use such means for recognition but provides no specific technical basis. | ¶39 | col. 2:40-43 |
| (c) means for creating a hybrid data structure including coded portions corresponding to said identifiable objects and non-coded portions... | The complaint alleges Adobe Reader does not have or use such means for creating a hybrid data structure but provides no specific technical basis. | ¶39 | col. 2:44-49 |
| (d) an output device for developing a visually perceptible raster image from said hybrid data structure... | The complaint alleges Adobe Reader does not utilize such an output device in the claimed manner but provides no specific technical basis. | ¶39 | col. 2:50-55 |
- Identified Points of Contention:
- Evidentiary Questions: The central issue for each of the thirty-one patents asserted as "inapplicable" is what factual and technical evidence Plaintiff will offer to support its conclusory allegations of non-infringement. The complaint itself provides no such evidence, stating only "upon information and belief" that the claims do not cover Adobe Reader (Compl. ¶¶ 33, 39, etc.).
- Scope Questions: For the ’818 Patent, a potential question is whether Adobe Reader's own font handling and substitution features, if any, perform the specific steps of width-matching and reconstruction as claimed. For the ’711 Patent, a question may be whether the data structures within a PDF file as processed by Adobe Reader constitute a "hybrid data structure including coded and non-coded portions" as the patent defines that term.
V. Key Claim Terms for Construction
The Term: "reconstructing characters" (’818 Patent, Claim 1)
Context and Importance: This term is central to the ’818 patent's claimed method. Whether Adobe Reader "reconstructs characters" will depend heavily on the term's construction. Practitioners may focus on this term because its definition will determine whether standard font substitution or rendering processes fall within the scope of the claim.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the process as a "method of reconstructing a document in an aesthetically pleasing manner from data of an original document having many fonts" (’818 Patent, col. 1:7-10), which could be argued to cover a wide range of font substitution activities.
- Evidence for a Narrower Interpretation: The claim requires constructing a character from a "different font" that has the "same width as said first character" (’818 Patent, col. 6:50-52). This specific width-matching requirement could support a narrower construction that excludes font substitution methods that do not precisely replicate character widths.
The Term: "hybrid data structure" (’711 Patent, Claim 1)
Context and Importance: The ’711 patent is directed to a system for producing and displaying images from this specific type of data structure. The applicability of the patent to Adobe Reader hinges on whether the data it processes (e.g., in a PDF file) meets this definition.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the structure broadly as containing "coded and non-coded portions from an input bitmap" (’711 Patent, col. 2:38-40). This could potentially be argued to read on any document format that mixes text code with raw image data.
- Evidence for a Narrower Interpretation: The specification repeatedly links the creation of the hybrid structure to an OCR process that distinguishes "identifiable objects" from "non-identifiable objects" based on a recognition confidence level (’711 Patent, col. 3:9-24). This could support a narrower construction limited to data structures created as a direct output of such a specific recognition and confidence-thresholding process.
VI. Other Allegations
Allegations of Deceptive Intent
- The complaint alleges that Defendant marked its Adobe Reader products with inapplicable patents with the "intent of deceiving the public" in violation of 35 U.S.C. § 292 (Compl. ¶2). The factual basis for this alleged intent includes:
- Notice: Defendant was allegedly put on notice of false marking issues by a prior lawsuit filed on December 30, 2009, which identified certain marked patents as expired. Plaintiff alleges that despite this notice, Defendant made "no substantial effort to correct" the markings and continued to distribute products with both expired and inapplicable patents (Compl. ¶¶ 24, 489).
- Motive: Plaintiff alleges a motivation for the mis-marking is to "deter members of the public, such as independent software developers, from implementing competing products that read and/or write PDF-format files" by creating the false impression of broad patent protection and imposing evaluation costs on competitors (Compl. ¶¶ 490-491).
VII. Analyst’s Conclusion: Key Questions for the Case
This case is not a typical patent infringement suit but rather a qui tam action for false marking. The central questions for the court will likely be:
- A core issue will be one of evidentiary proof: can the Plaintiff, who makes only conclusory allegations of non-infringement, produce sufficient technical evidence to prove by a preponderance of the evidence that Adobe Reader does not practice any claim of over thirty separate patents related to digital document technology?
- A second key question will be one of statutory intent: assuming Plaintiff can prove some patents are inapplicable, can it further prove that Adobe marked its products with the specific "intent of deceiving the public"? This requires showing more than a mistake or negligence and is a high evidentiary bar that will likely be the central point of contention in the litigation.