Fish & Richardson Team Wins Patent Infringement Case for Adobe

Click here for PDF of the National Law Journal article about this case.

Fish & Richardson successfully defended Adobe Systems Incorporated in the first case involving what some industry commentators have called "absurd software patents," [see, e.g., "Viewpoint," Communications of the ACM, Jan. 1992, p. 17]. In January 1996, Quantel, Ltd., a U.K. company, had sued Adobe for patent infringement in the U.S. District Court in Wilmington, Delaware. On September 19, 1997, a jury decided in favor of Adobe on every issue that had been raised at trial.

"Absurd software patents" refers to the perceived tendency of the U.S. Patent Office (at least in the past) to grant patents on well-known software techniques. Because software technology has developed quickly and without any central repository or indexing system for prior art, some observers believe that patent examiners have unwittingly accepted common notions as novel. In one notorious case, the Commissioner of Patents called for re-examination of a patent issued to Compton's on fundamental searching methods.

The five disputed patents in the Adobe case were claimed to cover procedures for creating artwork with a computer, including the use of soft-edged brushes, an on-screen palette, and simple cutting and pasting ("compositing"). Adobe proved at trial that these notions had been in the public domain for years before Quantel obtained its patents. Had Adobe been found to be infringing the patents, many other makers of computer graphics software could have faced exposure for patent infringement.

Quantel alleged that Adobe Photoshop®, one of Adobe's flagship products, infringed the five Quantel patents. Quantel asked that Adobe be enjoined from selling Photoshop and asked for damages of $138 million. That award could have been trebled to almost $500 million had Quantel shown that Adobe's alleged infringement was willful.

Quantel had succeeded in forcing several U.S. and foreign companies out of the graphics business by suing them for infringement of the same U.S. patents (or their U.K. counterparts). In one interesting twist, Quantel's U.K. patents had been found valid and infringed in a trial in the U.K. In 1990, Quantel deposited the record of that case, including the judge's opinion, in the still-pending U.S. patent files. As a result, that record was available to the jury in the Delaware litigation.

The Fish & Richardson team, under the direction of John Gartman, showed in Adobe's defense that Quantel had come to the U.S. in 1980 to look into the developing marriage of computers and art and had learned the basic techniques of computer painting and compositing. Returning to the U.K., Quantel used these techniques to make high-end special-purpose machines which it sold to television networks. When it filed for patents, Adobe alleged, Quantel kept secret the fact that what it claimed to have "invented" had in fact been free for the asking since the 1970ís at numerous conferences and academic institutions in the U.S.

The Fish & Richardson attorneys faced some unusual obstacles in preparing the defense. First they had to convince some of the early computer graphics pioneers to scour their attics and garages for evidence of the 1970's-era software. And because all of the early work had been done on now-extinct computer systems, it was not enough that they were able to unearth two of the early programs and some related artwork. All of the code had to be reformatted to run on modern Windows-based computers while retaining the original operations of the old systems.

At the trial, witnesses for Adobe included Alvy Ray Smith, who won an Academy Award for inventing the digital compositing technology used in such movies as "Beauty and the Beast" and "Star Trek." He was also responsible for the computer animation in Pixar's "Toy Story." In 1990, Smith received the Computer Graphics Achievement Award from the Association for Computing Machinery SIGGRAPH (Special Interest Group on Graphics) for his seminal contributions to computer paint systems. Smith testified that the technology Quantel claimed to have invented was already in widespread use at places like the New York Institute of Technology, where he worked in the 1970ís. In fact, it was revealed at the trial that Quantel representatives had visited NYIT in 1980 and started negotiations to acquire a license to its graphics technology, only to suspend the talks just weeks after Quantel secretly filed its first patent application.

Marc Levoy, an associate professor of Computer Science and Electrical Engineering at Stanford University, also testified for Adobe. Levoy won SIGGRAPH's 1996 Achievement Award. In the late 1970ís and early 1980ís, Levoy created computerized animation painting programs for Hanna Barbera Productions. At the trial, he was able to display his work for the jury with the assistance of Fred and Wilma Flintstone! Also appearing by video deposition was Dr. James Blinn, a MacArthur Foundation Fellow who won the first SIGGRAPH Achievement Award in 1983. Blinn had written his own painting program in the 1970ís and used it to create NASA's famous video simulations of the Voyager flyby of Saturn.

In an unconventional approach to a high-tech case, the Fish & Richardson team underscored their obviousness defense by bringing in a professional artist to give the jury a class in traditional painting methods and tools. The artist, David Em of Los Angeles, was himself one of the early computer graphics users, and explained how physical brushes would be expected to translate into the digital world.

After a nine-day trial before Judge Roderick McKelvie, the jury deliberated for four and one-half hours. In its 25-page verdict, it decided in favor of Adobe on every issue, finding that Quantel's claimed inventions were obvious and that Adobe's products did not infringe. In addition, the jury found that Quantel had acted inequitably in obtaining its patents because it was aware of pre-existing computer graphics inventions but failed properly to inform the patent office.

In addition to John Gartman, the Fish & Richardson team included attorneys Frank Scherkenbach, David Barkan, Tim Porter, and Gabe Kralik.

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