SpatialNews.com Press Release
Lizardtech Patent Litigation Threatens ISO JPEG2000 Standard
-- Perth, Australia, 2nd November 2004
In a move that threatens the ISO JPEG2000 imagery standard, Lizardtech, Inc. is appealing a US Federal Court Order, which ruled that Claim 21 of US patent #5,710,835 was invalid. The ’835 patent was developed by Los Alamos National Laboratories, and licensed by Lizardtech.
In October 1999 Lizardtech sued Earth Resource Mapping ( ER Mapper), claiming infringement of the ’835 patent. ER Mapper is a strong supporter of the JPEG2000 image standard, which competes with Lizardtech’s proprietary compressed image format. Further details on the original court action and win by ER Mapper are available here.
The case has a long and expensive history. It came to an end in March 2004 when Chief Judge John Coughenour of the U.S. District Court for the Western District of Washington ruled that the ’835 patent Claim 21 and its dependent claims are invalid. Judge Coughenour further ruled that ER Mapper’s products do not infringe the remainder of the ’835 patent.
Lizardtech has had a troubled history. After consuming a reported US$50 million in venture capital funding, LizardTech was sold in 2003 for US$11.25 million to Celartem, a small loss-making Japanese public company listed on the ‘Hercules’ second market. Celartem reported that Lizardtech lost 434,000,000 Yen (US$4.1 million) on sales of 486,000,000 Yen (US$4.6 million) in the 2003/04 fiscal year.
ER Mapper is not the only company that Lizardtech has litigated against. Mapping Science – a company that had been committed to JPEG 2000 - passed ownership of its assets to LizardTech in settlement of litigation between the two parties. It has been speculated that Mapping Science was unable to continue to pay for legal costs to defend itself against LizardTech’s litigation.
If Lizardtech were to win their appeal and overturn the ruling that Claim 21 of the ’835 patent is invalid, then they may require that users of JPEG2000 - or indeed any wavelet based imagery format – pay a license fee to Lizardtech to use the ’835 patent.
Submarine patents covering common image formats are of serious concern. In 1994, Unisys required that developers would have to pay a license fee in order to continue to use technology patented by Unisys in certain categories of software supporting the GIF format. In 2002, Forgent reported that it was seeking licensing revenue from companies using the old JPEG (not JPEG2000) image format. After obtaining $15 million from licensing their patent to a third-party licensee, Forgent sued 31 companies in 2004 for using JPEG without paying Forgent a licensing fee.
Lizardtech claims “JPEG 2000 is a file format specification, not a technology. The JPEG 2000 format does not infringe any patent.”
However, this claim is disingenuous. Patents do impact implementation of a file format, as shown by the GIS and JPEG licensing claims from Unisys and Forgent.
The intent of the ’835 patent controlled by Lizardtech is to seamlessly compress large images. It does this by dividing images into tiles and adding back edges between tiles to ensure that compression is seamless (read the patent at the USPTO for precise details).
However, Claim 21 from the ’835 patent is missing the crucial maintaining updated sums for tiles sentence that enabled the patent to be awarded for seamless image compression.
Claim 21 of the 5,710,835 patent is:
21. A method for selectively viewing areas of an image at multiple resolutions in a computer having a primary memory for data processing and a secondary memory for data storage, the method comprising the steps of:
storing a complete set of image data array I(x,y) representing said image in a first secondary memory of said computer;
defining a plurality of discrete tile image data T.sub.ij (x,y) subsets, where said complete set of image data I(x,y) is formed by superposition of said discrete tile image data T.sub.ij (x,y);
performing one or more discrete wavelet transformation (DWT)-based compression processes on each said tile image data T.sub.ij (x,y) in a selected sequence to output each said discrete tile image data T.sub.ij (x,y) as a succession of DWT coefficients in a succession of subband sets, where one subband of each set is a low-resolution representation of said discrete tile image data T.sub.ij (x,y) to form a sequence of low-resolution representations of said image data array I(x,y) to selected resolutions;
selecting a viewing set of said image data array I(x,y) to be viewed at a desired resolution:
determining a viewing subset of said DWT wavelet coefficients that support said viewing set of said image data at said desired resolution; and
forming from said subset of said DWT wavelet coefficients a computer display of said viewing set of said image data at said desired resolution.
The critical seamless step, missing from Claim 21 but present in Claims 1 and 13, is:
maintaining updated sums of said DWT coefficients from said discrete tile image T.sub.ij (x,y) to form a seamless DWT of said I(x,y) and storing said sums in a second memory location of said computer.
In his Order invalidating Claim 21, Chief Judge John Coughenour stated that:
The Special Master further indicated that initially, the Patent Examiner had rejected claim 21 among other rejected claims (Id. at 8-9.) Plaintiff applicant then submitted a response indicating that the goal of the process was to achieve seamlessness using the “updated sums” method. (Id. at 9.) Based on that response, the Examiner allowed all claims, and “stated that claims 1,13 and 21 were allowed because they required ‘maintaining updated sums of discrete wavelet transformation coefficients from the discrete tile image to form a seamless discrete wavelet transformation of the image.’” (Page 7, emphasis in original)
The core ISO JPEG2000 standard performs discrete wavelet transformations on images, but does not attempt to correct tile seam artifacts. If the invalidity ruling were to be overturned in appeal then Claim 21 of the ’835 patent would apply to any wavelet based image compression technology. This is because it is missing the “updated sums” step used to create seamless images.
Stuart Nixon, CEO and founder of ER Mapper, highlighted his concern, noting “should Lizardtech successfully appeal the invalidity of Claim 21, it appears that JPEG2000 would be covered by the ’835 patent.”
Mr. Nixon went on to say “ER Mapper has spent 5 years and a considerable amount of money successfully defending ourselves – and JPEG2000 – from Lizardtech’s litigation. We are now at the final and crucial stage, where uncertainty can be put to rest if Lizardtech loses their appeal.”
Supporters of the JPEG2000 standard should consider asking the US Federal Appeals Court for permission to file a “friends of the court” brief on ER Mapper’s behalf. Please email DefendJPEG2000@ermapper.com for further information on how you can assist in defending against Lizardtech’s appeal.
About Earth Resource Mapping
Earth Resource Mapping offers enterprise geospatial imagery solutions. Clients in more than 120 countries use ER Mapper to prepare imagery, ECW JPEG2000 to compress and use imagery, the Image Web Server to serve Terabyte size images over the Internet or RightWebMap for integrated web map solutions. Visit ER Mapper at www.ermapper.com or the Image Web Server web site at www.earthetc.com