DCT
2:23-cv-01945
Canva US Inc v. Accessify LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Canva US, Inc. (Delaware)
- Defendant: Accessify, LLC (Texas) and Ascend IP, LLC (Washington)
- Plaintiff’s Counsel: Hillis Clark Martin & Peterson P.S.; Turner Boyd Seraphine LLP
- Case Identification: 2:23-cv-01945, W.D. Wash., 12/18/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Washington because Defendant Ascend IP maintains its principal place of business in the district, and Defendant Accessify employs Ascend IP as its exclusive licensing agent, thereby transacting business in Washington.
- Core Dispute: Plaintiff seeks a declaratory judgment that its online design platform does not infringe eight patents owned by Defendant Accessify, following infringement allegations made by Accessify in a prior lawsuit filed in the Western District of Texas.
- Technical Context: The patents-in-suit relate to various web technologies, including methods for previewing digital content, graphical user interface interactions for manipulating images, and systems for controlling content access via domain name services.
- Key Procedural History: The complaint states this action arises from a prior lawsuit, Accessify, LLC v. Canva, Inc., et al., filed on October 23, 2023, in the Western District of Texas, where Accessify accused Canva of infringing the same eight patents. Canva alleges that the complaint in the Texas litigation, as well as a subsequent demand letter, lacked specific factual allegations of infringement.
Case Timeline
| Date | Event |
|---|---|
| 2000-05-16 | Earliest Priority Date for ’656 Patent |
| 2001-12-01 | Earliest Priority Date for ’032, ’397, ’489, ’424 Patents |
| 2002-07-17 | Earliest Priority Date for ’354, ’586 Patents |
| 2004-10-14 | Earliest Priority Date for ’266 Patent |
| 2008-01-01 | ’032 Patent Issued |
| 2008-12-30 | ’354 Patent Issued |
| 2009-07-14 | ’397 Patent Issued |
| 2010-07-06 | ’656 Patent Issued |
| 2011-11-29 | ’489 Patent Issued |
| 2013-04-09 | ’266 Patent Issued |
| 2016-07-26 | ’586 Patent Issued |
| 2020-02-04 | ’424 Patent Issued |
| 2023-10-23 | Accessify files Texas Litigation against Canva-related entities |
| 2023-12-18 | Canva files this Declaratory Judgment Complaint |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,316,032 - "Method for Allowing a Customer to Preview, Acquire and/or Pay for Information and a System Therefor"
The Invention Explained
- Problem Addressed: The patent addresses the commercial dilemma of distributing digital content, where providing full access for a purchase evaluation risks unauthorized copying, while restricting access hinders a customer's ability to make an informed purchase decision (’032 Patent, col. 7:47-67).
- The Patented Solution: The invention proposes a method of providing a "masked" or "reduced-utility" version of a digital information product to a user for preview. This is achieved by "superposing a masking effect" on the original content, which interferes with its full utility but still allows a user to evaluate it. The method includes steps for controlling the presence, duration, and permanence of this masking effect based on certain criteria, such as a purchase transaction (’032 Patent, Abstract; col. 13:1-13).
- Technical Importance: This technology sought to bridge the gap between "try-before-you-buy" marketing and digital rights management for online content in the early 2000s.
Key Claims at a Glance
- The complaint identifies independent claim 1 for its non-infringement argument (Compl. ¶ 60).
- Essential elements of claim 1 include:
- Providing a preview version of an information product created by superposing a masking effect on the original form.
- The masking effect is adapted to interfere with the user's reception of the information product in its original form.
- Allowing the user to access the preview version.
- Controlling at least one of the presence, absence, duration, application, and permanence of the masking effect based on at least one criterion, thereby controlling the user's reception of the original information product.
- The complaint does not explicitly reserve the right to assert non-infringement of dependent claims but seeks a declaration of non-infringement of "any claim of the '032 Patent" (Compl. ¶ 60).
U.S. Patent No. 7,472,354 - "Graphical User Interface Having an Attached Toolbar for Drag and Drop Editing in Detail-in-Context Lens Presentations"
The Invention Explained
- Problem Addressed: The patent's background describes the "screen real estate problem," where users struggle to perform accurate drag-and-drop operations on large digital images (like maps) because zooming in to see detail causes a loss of the surrounding context, making precise placement difficult (’354 Patent, col. 1:12-52).
- The Patented Solution: The invention proposes a method for positioning an object by first "distorting" the original image to create a magnified "distorted region" (a lens) around the object. The user then drags the object along with this magnified region to the desired location. This magnification facilitates accurate positioning, and the distortion is removed after the object is dropped, restoring the original image view (’354 Patent, Abstract; col. 2:57-65).
- Technical Importance: This technique provides a solution to a fundamental usability challenge in graphical user interfaces by enabling fine-grained control over object placement without sacrificing the broader visual context.
Key Claims at a Glance
- The complaint identifies independent claim 1 for its non-infringement argument (Compl. ¶ 66).
- Essential elements of claim 1 include:
- Distorting an original image to produce a distorted region for a selected object, where the distorted region includes magnification of at least a portion of the object.
- Receiving a signal for dragging the object with the distorted region from an initial to a desired position.
- Receiving a signal for dropping the object at the desired position, where the magnification facilitates accurate positioning.
- Removing the distorted region from the original image after the object is dropped.
- The complaint seeks a declaration of non-infringement of "any claim of the '354 Patent" (Compl. ¶ 66).
Multi-Patent Capsule: U.S. Patent No. 7,562,397
- Patent Identification: ’397 Patent, "Method and System for Facilitating Search, Selection, Preview, Purchase Evaluation, Offering for Sale, Distribution, and/or Sale of Digital Content and Enhancing the Security Thereof," issued July 14, 2009.
- Technology Synopsis: This patent relates to controlling the distribution of a digital work by arranging it into layers, including a "masking effect" layer. Superposing the masking layer onto a content layer creates a "masked configuration" for preview, with the invention controlling aspects of the masking effect to manage user access to the original work (Compl. ¶ 72).
- Asserted Claims: The complaint asserts non-infringement of at least claim 1 (Compl. ¶ 72).
- Accused Features: The complaint alleges non-infringement by the "Canva online visual communications and collaboration platform" (Compl. ¶ 72).
Multi-Patent Capsule: U.S. Patent No. 7,752,656
- Patent Identification: ’656 Patent, "Controlling Access to Name Service for a Domain Name System," issued July 6, 2010.
- Technology Synopsis: The patent describes a method for a name server to control access to content by determining if a request for a domain name is associated with user access privileges. If privileged, the server provides the IP address of the content; if not, it provides the IP address of an authorization server (Compl. ¶ 78).
- Asserted Claims: The complaint asserts non-infringement of at least claim 1 (Compl. ¶ 78).
- Accused Features: The complaint alleges non-infringement by Canva's platform, noting that its "web servers, methods of authentication, and use of DNS routing are all visible externally" (Compl. ¶ 78, ¶ 111).
Multi-Patent Capsule: U.S. Patent No. 8,069,489
- Patent Identification: ’489 Patent, "Method and System for Facilitating Search, Selection, Preview, Purchase Evaluation, Offering for Sale, Distribution, and/or Sale of Digital Content and Enhancing the Security Thereof," issued November 29, 2011.
- Technology Synopsis: This patent relates to controlling access to a digital work by providing a "masked configuration" created by applying a masking effect. The masked version is readily accessible and representative, allowing a user to "substantially examine" the work before purchase, with the system controlling the masking effect (Compl. ¶ 84).
- Asserted Claims: The complaint asserts non-infringement of at least claim 1 (Compl. ¶ 84).
- Accused Features: The complaint alleges non-infringement by the "Canva online visual communications and collaboration platform" (Compl. ¶ 84).
Multi-Patent Capsule: U.S. Patent No. 8,416,266
- Patent Identification: ’266 Patent, "Interacting with Detail-in-Context Presentations," issued April 9, 2013.
- Technology Synopsis: This patent describes a method of user interaction with a detail-in-context lens on a display. It involves receiving signals to select a "shoulder region" and then adjust a magnified "focal region" relative to it, defining a "folding" of the focal region over the shoulder region (Compl. ¶ 90).
- Asserted Claims: The complaint asserts non-infringement of at least claim 1 (Compl. ¶ 90).
- Accused Features: The complaint alleges non-infringement by the "Canva online visual communications and collaboration platform" (Compl. ¶ 90).
Multi-Patent Capsule: U.S. Patent No. 9,400,586
- Patent Identification: ’586 Patent, "Graphical User Interface Having an Attached Toolbar for Drag and Drop Editing in Detail-in-Context Lens Presentations," issued July 26, 2016.
- Technology Synopsis: The patent describes a method for object manipulation where, after an object is selected, its appearance is changed and a "lens" is attached to it. The method then involves receiving drag and drop signals to move the object and the lens together, wherein the lens magnifies a portion of the object and the surrounding image (Compl. ¶ 96).
- Asserted Claims: The complaint asserts non-infringement of at least claim 1 (Compl. ¶ 96).
- Accused Features: The complaint alleges non-infringement by the "Canva online visual communications and collaboration platform" (Compl. ¶ 96).
Multi-Patent Capsule: U.S. Patent No. 10,554,424
- Patent Identification: ’424 Patent, "Enhanced Security Preview of Digital Content," issued February 4, 2020.
- Technology Synopsis: This patent describes a method for providing a preview of a digital information product. The method involves generating a preview version based on customer-specified criteria, selecting a masking effect based on the product and customer preferences, and superposing the mask to create a masked version for the user to access prior to purchase (Compl. ¶ 102).
- Asserted Claims: The complaint asserts non-infringement of at least claim 1 (Compl. ¶ 102).
- Accused Features: The complaint alleges non-infringement by the "Canva online visual communications and collaboration platform" (Compl. ¶ 102).
III. The Accused Instrumentality
Product Identification
The accused instrumentality is identified as the "Canva online visual communications and collaboration platform" (Compl. ¶ 38).
Functionality and Market Context
The complaint broadly characterizes the accused product as encompassing "the hardware, software, and functionality that allows users to use, access, view, and purchase digital content and information from the Canva website" (Compl. ¶ 46, citing Ex. M, ¶ 22). As this is a declaratory judgment action for non-infringement, the complaint does not provide a detailed technical breakdown of the accused functionality. Instead, it asserts that Accessify's allegations in a prior Texas litigation were "wholly inadequate" and failed to provide specific facts as to how the Canva platform allegedly practices the claimed methods (Compl. ¶ 62, ¶ 68, ¶ 74). The complaint contends that Canva's platform is a "complex product with many features" and that Accessify failed to specify which aspects are accused of infringement (Compl. ¶ 46).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement and asserts that Accessify's infringement allegations in the prior Texas litigation were conclusory and failed to map specific features of the Canva platform to the claim limitations (Compl. ¶ 47, ¶ 62, ¶ 68). Consequently, the complaint does not contain specific allegations of infringing functionality from which a standard claim chart can be constructed. The tables below summarize Canva's asserted basis for non-infringement for the lead patents.
’032 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [1a] providing a preview version of said information product; said preview version being created by superposing a masking effect on an original form of said information product...said masking effect being superposed on a region...and adapted to interfere with receiving... | The complaint asserts that no product or service offered by Canva embodies this limitation (Compl. ¶ 61). | ¶61 | col. 13:14-26 |
| [1b] allowing said user to access said preview version of said information product | The complaint asserts that no product or service offered by Canva embodies this limitation (Compl. ¶ 61). | ¶61 | col. 13:27-29 |
| [1c] controlling at least one of presence, absence, duration of application and permanence of said masking effect, superposed on said information product, in accordance with at least one criterion thereby controlling receiving of said information product in said original form... | The complaint asserts that no product or service offered by Canva embodies this limitation (Compl. ¶ 61). | ¶61 | col. 13:30-36 |
’354 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| [1a] distorting said original image to produce a distorted region for said object, said object being positioned at an initial position within said original image, said distorted region including magnification of at least a portion of said object | The complaint asserts that no product or service offered by Canva embodies this limitation (Compl. ¶ 67). | ¶67 | col. 24:5-9 |
| [1b] receiving a signal for dragging said object with said distorted region from said initial position to a desired position for said object within said original image | The complaint asserts that no product or service offered by Canva embodies this limitation (Compl. ¶ 67). | ¶67 | col. 24:10-13 |
| [1c] receiving a signal for dropping said object at said desired position, whereby said distorted region with said magnification facilitates accurate positioning of said object at said desired position | The complaint asserts that no product or service offered by Canva embodies this limitation (Compl. ¶ 67). | ¶67 | col. 24:14-18 |
| [1d] removing said distorted region from said original image after said dropping of said object | The complaint asserts that no product or service offered by Canva embodies this limitation (Compl. ¶ 67). | ¶67 | col. 24:19-21 |
- Identified Points of Contention:
- Factual Dispute: The central dispute is factual: does the Canva platform practice the methods recited in the asserted claims? The complaint’s primary contention is that Accessify has failed to provide any evidence or specific allegations to support its infringement theory (Compl. ¶ 47). The case may therefore focus on whether Accessify can identify specific functionalities in the Canva platform that meet each claim limitation.
- Scope Questions: For the ’032 Patent and its relatives, a key question may be what constitutes a "masking effect." For the ’354 Patent and its relatives, a key question may be what constitutes "distorting said original image to produce a distorted region," particularly whether this requires the specific "detail-in-context lens" technology described in the specification or can read on more general UI magnification techniques.
V. Key Claim Terms for Construction
The Term: "masking effect" (from ’032 Patent, claim 1)
Context and Importance: This term is central to the asserted claims of the ’032, ’397, ’489, and ’424 patents. Its construction will determine whether features like watermarks or limitations on functionality in preview versions of digital assets on the Canva platform could be considered infringing. Practitioners may focus on this term because its breadth is critical to the infringement analysis.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language recites that the effect is "adapted to interfere with receiving of said information product in said original form" (’032 Patent, col. 13:24-26). The related ’424 patent describes a mask as an "interruption", "discontinuity", "veil", or "masquerade" that "limits the utility" of the content (’424 Patent, col. 23:46-56). This language could support a broad definition covering any feature that makes a preview version less than fully functional.
- Evidence for a Narrower Interpretation: The specification of the related ’424 patent provides specific examples of masking effects, such as content overlays, distortion, blurring, noise signals, and perceptible interference waves (’424 Patent, col. 27:15-41). A defendant could argue that the term should be limited to these disclosed embodiments or effects that physically obscure or alter the content, rather than merely limiting access or adding a watermark.
The Term: "distorting said original image to produce a distorted region" (from ’354 Patent, claim 1)
Context and Importance: This term is the core technical step of the methods claimed in the ’354, ’266, and ’586 patents. The dispute may turn on whether Canva's UI for moving or editing objects involves "distorting" the underlying image in the claimed manner, or if it uses alternative, non-infringing GUI techniques.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself is relatively broad, requiring only "distorting" to produce a "distorted region" that includes "magnification" (’354 Patent, col. 24:5-9). This could be argued to cover a wide range of graphical effects that locally magnify a portion of an image.
- Evidence for a Narrower Interpretation: The detailed description of the ’354 patent heavily emphasizes a specific technique known as "Elastic Presentation Space" (EPS), which involves mapping a 2D image onto a 3D surface that is then manipulated and projected back to 2D to create the lens effect (’354 Patent, col. 7:1-67). A defendant may argue that the term "distorting" should be construed as being limited to this specific, extensively described embodiment.
VI. Other Allegations
The complaint does not allege willful or indirect infringement. Instead, it makes affirmative claims against the Defendants for making "bad faith assertions of patent infringement" in violation of Washington state law (Compl. ¶¶ 107-119).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary sufficiency: Can Accessify, in response to this declaratory judgment action, produce specific, factual evidence that maps concrete functionalities of the Canva platform to each element of the asserted claims? The case's posture suggests a primary battle over whether Accessify's infringement contentions can meet the plausibility standards for pleading.
- A second key issue will be one of definitional scope: How broadly will the court construe foundational claim terms like "masking effect" and "distorting said original image"? Whether these terms are given their plain and ordinary meaning or are limited to the specific embodiments detailed in the patents will likely be determinative of the non-infringement question for multiple patents-in-suit.