Lightricks Ltd v. Plotagraph Inc

1. Case Identification

• Case #: IPR2023-00153
• Patent #: 10,346,017
• Filed: Jan. 17, 2023
• Petitioner(s): Lightricks Ltd.
• Patent Owner(s): Plotagraph, Inc. and Sascha Connelly
• Challenged Claims: 1-18

2. Patent Overview

• Title: Automating Shifting of Pixels Within a Digital Image
• Brief Description: The ’017 patent discloses a computer system and method for creating animations from a still digital image. A user defines one or more links via starting and ending points on the image, and the system automatically shifts pixels along these links in a rendered loop to create movement.

3. Grounds for Unpatentability

Ground 1: Claims 1-18 are Anticipated or Otherwise Obvious over AEM

• Prior Art Relied Upon: AEM (Adobe After Effects CS6 Help and tutorials, 2013).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that AEM, a user manual for Adobe After Effects CS6 software, discloses every limitation of the challenged claims. AEM's "Puppet" effect tool allows a user to animate a layer (a digital image) by placing "Deform pins." Petitioner asserted that placing an initial Deform pin at a starting time creates a "starting keyframe," which corresponds to the claimed "receiving a first starting point." Moving the pin to a new location at a later time creates an "ending keyframe," which corresponds to the claimed "receiving a first ending point." The software automatically generates and renders a "motion path" between these keyframes, which Petitioner mapped to the claimed "rendered link." AEM automatically creates a mesh from the non-transparent pixels of the layer and animates the mesh to accommodate the pin's movement, corresponding to the claimed "automatically shift the first set of pixels." AEM's "loopOut()" expression can be applied to repeat this animation indefinitely, meeting the "rendering and re-rendering in a loop" limitation.
  • Motivation to Combine (for §103 grounds): While primarily an anticipation argument, Petitioner also argued for obviousness. For claim limitations requiring the selection of pixels (e.g., parallel to the link), AEM teaches using masks or mattes to define the non-transparent (and thus animated) areas of an image. A POSITA would have found it obvious to create a mask that includes pixels parallel to the motion path to animate a specific feature, such as rising smoke.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as AEM's masking tools were standard features designed precisely for selecting pixels to be included in or excluded from an effect.

Ground 2: Claims 1-3, 5-11, 13-16, and 18 are Obvious over IMU in view of Okabe

• Prior Art Relied Upon: IMU (ImageMagick Usage website, 2012 captures) and Okabe ("Creating Fluid Animation from a Single Image using Video Database," 2011).
• Core Argument for this Ground:
  • Prior Art Mapping: IMU discloses the ImageMagick Version 6 (IMV6) software, a powerful command-line tool for image manipulation. It teaches applying distortion effects like "Shepard's Distortion" by specifying starting and ending coordinates for "control points" to shift pixels and create animation frame-by-frame. Okabe discloses a method for synthesizing fluid animation from a single image using a simple graphical user interface (GUI) where a user draws "a sparse set of user-drawn strokes" to define the animation's flow, direction, and speed. The combination results in a GUI-driven animation tool where Okabe's user-drawn strokes provide the input for IMU's underlying distortion engine.
  • Motivation to Combine: A POSITA would combine IMU with Okabe to improve IMU's usability. IMU was a powerful but non-graphical, text-based tool requiring laborious command-line entry to create animations. Okabe teaches a simple, intuitive, and graphical method to define animation with significantly less user burden. A POSITA would have been motivated to implement Okabe’s user-friendly GUI as a front-end for IMV6's animation capabilities to make the process faster, more intuitive, and accessible to a wider range of users.
  • Expectation of Success: A POSITA would have reasonably expected success in implementing Okabe's graphical commands to control IMV6's distortion effects, as this involved applying known GUI principles to an existing command-line animation engine.

Ground 3: Claims 2-4, 10-12, and 15-17 are Obvious over IMU and Okabe in view of Li

• Prior Art Relied Upon: IMU, Okabe, and Li ("Lazy Snapping," 2004).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the IMU/Okabe combination by adding Li's "Lazy Snapping" tool. Li teaches a novel and efficient UI for image cutouts, allowing a user to mark foreground and background regions with simple lines, after which an algorithm automatically generates a precise boundary. The claimed masking limitations (claims 2-4, etc.) are met by using Li's tool to create the "alpha matte" that Okabe requires to define the region of interest for animation.
  • Motivation to Combine: The motivation is explicit. Okabe expressly teaches that the required matte can be created "using a scribble-based image segmentation tool" and specifically cites Li as an example of such a tool. Given this express suggestion, a POSITA would have been directly motivated to incorporate Li's efficient "Lazy Snapping" tool into the IMU/Okabe combination to create the animation masks, leveraging Li's benefits of "ease of use, efficiency, and quality of results."
  • Expectation of Success: Success was highly probable, as Okabe explicitly directs a POSITA to use a tool like Li for a specific, well-defined purpose (matte creation) within its disclosed method.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on parallel litigation is unwarranted. The parallel district court case was dismissed on the grounds that the ’017 patent recites patent-ineligible subject matter under 35 U.S.C. §101. Petitioner asserted that the pending appeal of that decision reviews only the §101 issues and does not involve the anticipation and obviousness grounds (§102/§103) raised in this IPR, thus eliminating concerns of duplicative efforts or inefficiency.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’017 patent as unpatentable.