2:25-cv-00559
S A Intl v. Xante
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: S A International, Inc. (Utah)
- Defendant: Xante Corporation (Florida)
- Plaintiff’s Counsel: PCFB, LLC
- Case Identification: 2:25-cv-00559, D. Utah, 09/04/2025
- Venue Allegations: Plaintiff S A International, Inc. ("SAi") alleges venue is proper in the District of Utah because Defendant Xante Corporation ("Xante") conducts business, sells products, and targets advertising to residents within the state. The complaint further asserts that Xante purposefully directed its activities at Utah by sending a cease and desist letter to SAi, a Utah corporation.
- Core Dispute: In this declaratory judgment action, Plaintiff SAi seeks declarations that its products do not infringe, and that the claims of, U.S. Patent No. 8,743,421 are invalid.
- Technical Context: The technology at issue relates to software-based methods for correcting "spot colors" in professional digital printing workflows to ensure visual consistency between a design on a computer screen and the final printed product.
- Key Procedural History: The action was precipitated by a cease and desist letter sent by Xante to SAi on June 30, 2025, which alleged that SAi's "Spot Color Mapping and Matching" feature infringes Xante's patent. The complaint’s central defense is that the accused functionality was publicly available in SAi's products as early as March 2005, more than six years before the patent’s earliest priority date, potentially rendering the patent invalid as anticipated. SAi also brings a claim under the Utah Distribution of Bad Faith Patent Infringement Letters Act.
Case Timeline
| Date | Event |
|---|---|
| 2005-03-21 | Launch of SAi's FlexiSIGN 7.6, which allegedly included the accused "spot color mapping feature" |
| 2009-02-25 | Date by which SAi's Flexi Version 8.6, which also allegedly included the feature, was publicly offered for sale |
| 2011-07-18 | Patent Priority Date (U.S. Provisional Application No. 61/509,079) |
| 2014-06-03 | U.S. Patent No. 8,743,421 Issues |
| 2025-09-04 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,743,421 ("the ’421 Patent"), titled "System and Method for Spot Color Correction," issued on June 3, 2014. (Compl. ¶51).
The Invention Explained
- Problem Addressed: The patent's background section details the persistent challenge in the printing industry of faithfully reproducing colors, especially pre-defined "spot colors," from a digital file to a physical print. It notes that environmental factors, as well as differences in printers, inks, and media, create a "complicated and troublesome" matching problem, as the gamut of colors a monitor can display differs from what a printer can produce. (’421 Patent, col. 2:50-65).
- The Patented Solution: The invention is a pre-press method that allows a user to correct spot colors within a specific printing environment. A workflow application first identifies spot colors in a design file and then generates and prints a "swatch page"—a grid of color tiles that are variations of the original spot color. (’421 Patent, Abstract). Each tile on the printed swatch is assigned a unique numerical value. (’421 Patent, Fig. 3). The user visually compares the printed tiles to a target color sample, selects the best match, and inputs that tile's numerical value back into the software, which then alters the original design file to use the corrected color for future prints. (’421 Patent, Abstract; col. 4:50-65).
- Technical Importance: The patented method provides a practical, visual feedback loop for color calibration that does not rely on expensive colorimetric hardware, enabling users to achieve more consistent color output and reduce costs associated with wasted ink and media. (’421 Patent, col. 4:39-42).
Key Claims at a Glance
The complaint focuses its non-infringement arguments on independent claims 1 and 27. (Compl. ¶¶70, 73, 99).
Independent Claim 1 (Method):
- In a workflow printing topology with a software application transferring a document file to a printer with a raster image processor and print engine;
- Printing a draft and determining if spot color correction is needed;
- If so, printing a color swatch page with a plurality of color tiles;
- Assigning a unique numerical value to each tile;
- Selecting a tile that best matches a desired color;
- Inputting the selected tile's unique numerical value into the software; and
- Altering the document file to record the color change.
Independent Claim 27 (Method):
- In a workflow printing topology with a software application transferring a document file to a printer with a raster image processor and print engine;
- Printing a draft and determining if spot color correction is needed;
- If so, printing a color swatch page with a plurality of color tiles;
- Selecting a tile that best matches a desired color;
- Inputting information associated with the selected tile into the software; and
- Altering the document file to record the color change.
The complaint seeks a declaration of non-infringement for all claims of the patent. (Compl., Prayer for Relief ¶1).
III. The Accused Instrumentality
Product Identification
The complaint identifies SAi's Flexi Sign & Print ("FlexiSIGN") software application, specifically its "Spot Color Mapping and Matching" feature. (Compl. ¶15). The analysis covers multiple versions of the software, including FlexiSIGN 7.6 (released 2005), Version 8.6 (released before 2009), and the current Version 25. (Compl. ¶¶21, 34, 43).
Functionality and Market Context
The accused feature is alleged to allow users to generate and print a grid of color variations, or a "swatch," to visually match a desired spot color. (Compl. ¶¶35, 54). The complaint alleges that a user can then identify the best match from the printed swatch using X and Y coordinates and input those coordinates into the software interface to update the color definition. (Compl. ¶36). The complaint provides a side-by-side comparison of the feature's user interface from a 2005 user manual and the interface depicted in Xante's 2025 cease and desist letter to argue that the core functionality has remained "substantially unchanged" for nearly two decades. The complaint includes a screenshot comparing the interface from a 2005 manual with an interface presented in the cease and desist letter to support this claim. (Compl. p. 6). SAi describes its FLEXI software as a comprehensive solution for the sign and print production industry that it has been selling since 1995. (Compl. ¶19).
IV. Analysis of Infringement Allegations
The infringement allegations are derived from Xante's cease and desist letter, as quoted and referenced in SAi's complaint for declaratory judgment. (Compl. ¶¶15, 53-57). The following chart summarizes these allegations against claim 27 of the ’421 Patent.
’421 Patent Infringement Allegations
| Claim Element (from Independent Claim 27) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| printing a color swatch page for each spot color requiring correction, wherein each swatch page includes a plurality of color tiles | The FlexiSIGN software's "Print Swatch" button generates and prints a "table of color swatches" containing variations of a spot color. The complaint includes a screenshot from Flexi Version 8.6 showing the preview of this swatch grid. (Compl. ¶35, Fig. 2). | ¶¶15, 54 | col. 4:50-54 |
| selecting a color tile for each spot color that most closely matches a desired printed rendition of said spot color | A user visually compares the printed swatch to a sample color and selects the best match by identifying its coordinates on the grid. (Compl. ¶¶53, 57). | ¶¶36, 57 | col. 4:59-62 |
| inputting information associated with each selected color tile into said workflow software application | The user inputs the X and Y coordinates of the selected tile into "Closest matching swatch" fields in the software's user interface. A screenshot from a user manual, provided in the complaint as Figure 6, depicts these input fields. (Compl. ¶56, Fig. 6). | ¶¶36, 57 | col. 4:62-65 |
| altering said page description document file to record changes for each spot color altered in said color tile selection step | After the user inputs the coordinates and clicks "Update Color," the software allegedly reproduces the new color "via an altered PDL file" and saves the values for repeated use. (Compl. ¶38, 57). | ¶¶38, 57 | col. 4:65-67 |
- Identified Points of Contention:
- Scope Questions: SAi's primary non-infringement argument is that its software is not "a printer having a raster image processor," a component recited in the preamble of the asserted independent claims. (Compl. ¶¶70-74, 99). This raises the question of whether a software provider can be a direct infringer of a method claim that requires hardware it does not make or provide. The analysis may therefore focus on theories of divided or indirect infringement.
- Technical Questions: A central factual dispute will surround SAi's invalidity defense. The complaint asserts that the accused "Spot Color Mapping" functionality has been publicly available since March 2005, predating the patent's 2011 priority date. (Compl. ¶¶63, 66). This raises the evidentiary question of whether the functionality in the prior versions of SAi's software meets every limitation of the asserted claims, which would render the claims invalid under 35 U.S.C. § 102.
V. Key Claim Terms for Construction
The Term: "a printer having a raster image processor"
Context and Importance: This phrase, located in the preamble of independent claims 1 and 27, is the foundation of SAi's non-infringement argument. (Compl. ¶¶72, 74). SAi contends that because its software is not a printer, it cannot infringe. The construction of this term will be critical to determining who, if anyone, is the direct infringer of the claimed method.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Xante may argue that the phrase merely sets the environment ("In a workflow printing topology in which...") where the patented method is performed, and that the inventive steps relate to the software's actions. The patent’s detailed description focuses on the workflow application's role in creating, printing, and processing the swatch page, suggesting the software is the core of the invention. (’421 Patent, col. 4:43-col. 5:7).
- Evidence for a Narrower Interpretation: SAi will likely argue that the plain language makes the printer an affirmative limitation of the claim. Because the method involves the physical act of "printing a color swatch page," SAi could argue that the direct infringer must be the party that controls both the software and the printer that performs the claimed steps.
The Term: "unique numerical value" (Claim 1) / "information associated with" (Claim 27)
Context and Importance: Practitioners may focus on this term because the patent specification discloses a specific mathematical formula for generating a numerical value based on HSV color space, while the accused product uses X/Y coordinates. (Compl. ¶36; ’421 Patent, col. 8:53-55). The dispute will concern whether a coordinate pair meets the definition of this claim element.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Xante may argue that "information associated with" a tile (Claim 27) is a broad term that plainly encompasses X/Y coordinates, which uniquely identify a tile's location and corresponding color data. It could also argue that an X/Y pair functions as a "unique numerical value" (Claim 1) for the purpose of identifying a selection, consistent with the patent's abstract, which refers to inputting a "pre-assigned numerical value." (’421 Patent, Abstract).
- Evidence for a Narrower Interpretation: SAi may argue that the term "unique numerical value" should be interpreted more narrowly in light of the specific and detailed formula provided in the specification, suggesting the inventors contemplated a single, calculated scalar value rather than a positional coordinate pair. (’421 Patent, col. 8:53-55).
VI. Other Allegations
- Indirect Infringement: Although SAi seeks a declaration of non-infringement generally, Xante's allegations against SAi as a software provider implicitly rely on a theory of indirect infringement. Xante's cease and desist letter references SAi's user manual and a YouTube video demonstrating the feature, which could be used to argue that SAi actively induces its customers (the printer operators) to perform the patented method. (Compl. ¶¶15, 55).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of invalidity by anticipation: does the documentary and testimonial evidence support SAi's assertion that its "Spot Color Mapping" feature, as publicly sold starting in 2005, practiced every limitation of the asserted claims more than one year prior to the patent's effective filing date?
- A key legal question will be one of claim scope and liability: can the asserted method claims, which recite a "printer" as part of the operational environment, be directly infringed by a software provider that does not make, sell, or operate the printer? This may shift the focus to whether the facts support a claim for indirect infringement against SAi.
- A central claim construction dispute will be one of definitional interpretation: does the term "unique numerical value," as described in the patent, encompass the "X/Y coordinates" used by the accused software to identify a selected color swatch, or is it limited to the specific type of calculated value disclosed in the specification?