Lightricks Ltd v. Plotagraph Inc

1. Case Identification

• Case #: IPR2023-00154
• Patent #: 10,621,469
• Filed: January 23, 2023
• Petitioner(s): Lightricks Ltd.
• Patent Owner(s): Plotagraph, Inc. and Sascha Connelly
• Challenged Claims: 1-2, 6-14, and 18

2. Patent Overview

• Title: Automating a Shifting of Pixels Within a Video File
• Brief Description: The ’469 patent discloses computer-implemented systems and methods for animating a portion of a video file. The technology involves a user selecting starting and ending points within a video frame to define a "digital link," which is then used to identify and shift a corresponding set of pixels in the direction of the link.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 6-14, and 18 are anticipated or 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 the AEM manual, which describes the Adobe After Effects CS6 software, discloses every limitation of the challenged claims. AEM teaches extracting a single frame from a video file and using the "Puppet" effect to animate it. A user places "Deform" pins, which correspond to the claimed start and end points. This action creates a "motion path" (the claimed "digital link") and a "mesh" of pixels associated with the pins. AEM then animates the layer by shifting these pixels along the motion path from the start to the end keyframe. AEM's masking and matting tools, such as the "Pen" tool and "Auto-trace" function, were alleged to meet the limitations for identifying a set of pixels to be shifted, including those parallel to and within a threshold distance of the digital link.
  • Key Aspects: This ground asserted that a widely available commercial software product, prior to the patent's priority date, contained all the features of the claimed invention, rendering the claims anticipated or at least obvious.

Ground 2: Claims 1-2, 6-13, and 18 are obvious over IMU in view of Okabe

• Prior Art Relied Upon: IMU (Wayback Machine captures of the ImageMagick Version 6 website, 2012) and Okabe ("Creating Fluid Animation from a Single Image using Video Database," 2011).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that IMU, a command-line image processing tool, teaches pixel shifting through its "Shepard's Distortion" effect, where a user defines control points (start/end points) and moves them to new coordinates to distort an image. IMU can also create looping animations from these effects and extract individual frames from a GIF animation. Okabe describes a method for creating fluid animation from a single image using a graphical user interface (GUI), where a user draws "strokes" on an image to define flow direction and speed. The combination of IMU's pixel-shifting functionality with Okabe's user-drawn strokes was argued to disclose receiving start/end points via a user interface, creating a digital link, and shifting pixels accordingly.
  • Motivation to Combine: A POSITA would combine these references to improve the usability of IMU's powerful but laborious command-line interface. IMU itself acknowledged the disadvantages of lacking a GUI. Okabe provided a well-suited solution, teaching simple graphical commands to define animation parameters ("user-drawn strokes"), which would make IMU's animation process easier, more intuitive, and less time-consuming.
  • Expectation of Success: A POSITA would have a high expectation of success in implementing Okabe's GUI-based input method to control the known distortion effects of IMU, as it involved applying a known UI paradigm to a known backend processing engine to achieve a more efficient workflow.

Ground 3: Claims 12-14 are obvious over IMU in view of Okabe and Li

• Prior Art Relied Upon: IMU (ImageMagick Version 6 website, 2012), Okabe (2011 journal article), and Li ("Lazy Snapping," 2004).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the IMU-Okabe combination from Ground 2, adding the teachings of Li to address claims related to masking. The IMU-Okabe combination allows a user to apply a "matte" to define a region of interest for animation. Li discloses a highly efficient "image cutout" tool called "Lazy Snapping" that allows a user to easily separate a foreground object from its background by drawing simple coarse lines. This functionality directly corresponds to the claim limitations of generating a mask based on user input to prevent certain pixels from shifting.
  • Motivation to Combine: A POSITA would be motivated to incorporate Li's "Lazy Snapping" technique into the IMU-Okabe combination to improve the matte creation process. Okabe explicitly suggests using a "scribble-based image segmentation tool," specifically citing Li's "Lazy Snapping," to create its mattes. Therefore, the primary reference (Okabe) expressly teaches combining its methods with the secondary reference (Li). This would provide the benefits described by Li—ease of use, efficiency, and quality results—for the masking step in the animation workflow.
  • Expectation of Success: The expectation of success was high because Okabe explicitly directs a POSITA to use a tool like Li's for the exact purpose of creating the mattes used in its animation method.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) was unwarranted. While a related district court litigation exists, it is stayed pending an appeal that reviews only patent-ineligibility issues under §101. Petitioner asserted that this appeal does not present efficiency or duplicative effort concerns for the Board's review of distinct patentability issues under §102 and §103.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-2, 6-14, and 18 of the ’469 patent as unpatentable.