//
you're reading...
IP, Patent, Risk Mangement

Inventor Of Patented CGI Technique Runs To Court After A Walt Disney Runaround

Joe Alter invented an improved technique for computer generated animation back in 2000, and was awarded US Patent 6,720,962 in 2004. According to Alter’s patent, his invention allows for “creation of a highly stable coordinate system involving guide columns in which Cartesian physical simulations may be carried out and rendered as well as deformed and rerendered if desired.”  In other words, using Alter’s patented method, artists can render more realistic movement of illustrated aspects of hair, fur, feathers, “dust bunnies” and etc.  According to a Pixar white paper, hair is one of the most crucial and challenging aspects of rendering human-like figures in computer animation.

Believing that his patented techniques may have been used to create some of Disney’s recent animated films, Alter contacted Stuart Langley in Disney’s corporate patent group.  From an email chain provided by Alter, the two likely engaged in some conversation, but not to Alter’s satisfaction.  After not receiving substantive feedback after a week, Alter provided Disney with four specific questions.  Depending on the answers, Alter suggested that he could be convinced that Disney had not used his patented method. Unfortunately for all sides, the written questions appear to have gone unanswered for about three more weeks.

From the emails (part of the document embedded below), Alter’s use of quotes that don’t appear in the rest of the email chain suggest that he’s referring to a phone conversation.  Reading between the lines, it sounds as if Disney representatives called Alter up, advised him their systems and Alter’s patent had “nothing in common but their goal,” but refused to discuss any specifics.  This kind of response is all too common.  When a company such as Disney believes that a patent owner lacks the capacity to aggressively enforce a patent, they often claim the company’s product is not even close, and insist that the patent owner essentially take their word for it.

For Alter’s part, he’s not taking Disney’s word for it, but he is still going it alone. Paperwork Alter submitted to the Central District of California on October 5 (embedded below) is being treated as a pro se complaint for patent infringement. It’s likely a step Alter didn’t want to take, and it should be unnecessary.  Alter appears to have done a significant amount of research–both to obtain the patent, and to investigate Disney’s possible usage of his invention.  Inventors won’t simply “walk away” because a company insists, without support, that it’s not using the invention. So if Disney doesn’t want to deal with Alter, it can now deal with the courts.

View this document on Scribd
About these ads

Discussion

20 thoughts on “Inventor Of Patented CGI Technique Runs To Court After A Walt Disney Runaround

  1. I’m surprised with THIS patent that he could not get attention from a contingency firm.

    Posted by J Nicholas Gross (@JNGross) | October 7, 2011, 12:52 pm
  2. hi,

    Thanks for the words of support. I don’t see a way to upload here, but you can find the full text of the actual complaint here :

    http://www.joealter.com/civ18_disney.pdf

    I talked to one contingent fee firm, I hadn’t written up all this stuff yet but I think they had a hard time grasping it and declined because they felt the complexity would make it too expensive for them to take risks, it was discouraging – in anycase, I’m pretty confident that some basic deposition and some minimal discovery will clear quite a lot up and timing is really important here with regards to an injunction (as you can tell from the complaint) and I didn’t want to let them run out the clock.

    I’ve instead retained a firm to act as my editor, point me at forms, etc.

    I feel comfortable enough with my knowledge of the material that I think I can do the depo, as long as I don’t make fatal mistakes in terms of the law.

    joe

    Posted by joe alter | October 9, 2011, 1:23 am
  3. I’m surprised this patent was granted in the first place. Prior art: http://www.imdb.com/title/tt0164912/

    Posted by Mark Visser | February 27, 2012, 8:04 pm
    • This case has been settled – however, I’ll argue those points –

      Though the ‘962 patent was not issued till 2004, the patent was submitted prior to Monster’s Inc (released 2001), that’s the date that counts – it was also shown in publications as early as 1999 – additionally the method is very easily distinguished from Stuart Little. (the first one)

      If you look at CG World 1995, I was doing guide interpolation way before they were, so that portion of their patent certainly doesn’t hold sway.

      It is hard to know what studios do internally in secret, however you can inform yourself from their patents and seeing how they evolve.

      Though the guides (in my view) are not central to the patent, there were new and distinguishing things about them – they were oriented to the skin and physically carried with it (surface referenced) in world space. This means (in addition to other things) that the guides can be manipulated in place over time.

      If you look at the Imageworks patent (applied for in 1999), the hair is all created once as a pre-process and interpolated in in flat unfolded UV space [and cached], not world or object space – it is therefor not designed to react to real world forces or fields, or carry out actual dynamic simulations. The same is true for ILM’s patent (applied for at that time). It is created by manually orienting sculpted curves to a rest position of the object and then marking positions in uv space and then regarding the hair as a texture.

      The principal improvements to Stuart Little’s method (if you review their patent), is that, as they even concede in their patent – there is not a coordinate system in the hair, therefor the only stable displacements that can be done to the hair is clumping [which they describe], where hairs are attracted to a a bunch of central clump hairs – the are pulled either closer or pushed further from that hair, they cannot be knarled or curled or even twisted around the central hair.

      They cannot have noise field displacements, or any other kind of displacement because there is no coordinate system to carry those displacement around as the guides bend and move, not because they couldn’t have engineered that with the same structures, but because they clearly hadn’t conceived of one.

      In the ‘962 patent, however, every hair has a coordinate system and surrounding envelope.

      You can contrast ILM’s later 2001 and Sony’s 2004 patent application where they do many of those things to see that there is indeed a difference, they felt so strongly enough to apply for later patents with only these improvements.

      I won’t comment on other studios [Did you know if you even hint that another studio is using your methods and then DON'T sue them immediately, you've basically granted them a license? They can even sue you for it.], it is clear when you examine Disney and Pixar’s work that they are indeed creating this kind of coordinate system as there are displacements of this kind that get carried around with the interpolated hair. It’s principally what makes hair look complex enough to be real.

      Every element of a patent is not expected to be unique to be valid – there are multiple patents on all kinds of things that have similar purposes. What’s of consequence about a specific patent is what was it that was new, and is THAT thing in use in the infringing technology.

      Not even every claim of a patent need remain valid for the patent to survive, however the invalid portions will no longer count.

      Only one of these unique improvements must be present in the infringing technology to win a case.

      Additionally, even if you engineer around the precise vector methods that I’m using in the patent (even in the claims) – there is still a doctrine of equivalents (even with festo). If it looks like a duck, swims, quacks and poops like a duck – the presumption is that it’s a duck.

      Patents are not about an algorithm, but an idea. Infact, algorithms are specifically NOT patentable. The central new idea here was a creating a coordinate system around each interpolated hair and the stuff you can do with that.

      The bar to getting a patent issued is very low. It’s a much higher bar for it to survive close examination years later. And even a higher bar for it to even be relevant a decade later. This patent patent meets those.

      Quite a lot of experimentation comes before a patent of this sort. I had tinkered around with hair as early as 1991 (even at ILM and for Stuart Little at Centropolis). It was an attractive problem because it was clearly needed and clearly not easy to do still. Operating a hair system to produce things like Stuart Little required quite a lot of manual work and technical intervention from programmers at every step of the way. What I aimed to do with my product was create a hair system that was simple and flexible enough that an artist could use without giving much thought to the technology and produce realistic results.

      These methods were hard won, and came at great personal expense – I didn’t do them on someone’s payroll or even with a particular project in mind. There was quite a lot of stuff that in hindsight was quite new that -didn’t- end up in the patent (because I wasn’t sure).

      People often view the patent system with contempt because it all seems so damn picky over such little things and it’s easy for people to say “oh, I could [would] have thought of that” – the people who have this view are usually open sources. They rip off anything they can get their hands on release it to the world as though it’s some kind of altruistic gesture. People even commonly reffer to patent holders as ‘trolls’.

      Thing is, that stuff the opensourcers are giving away wasn’t theirs in the first place. They didn’t pay the price of all the failures that came before the success. They just pounced on someone else’s idea and wanted to feel like a big shot.

      Who’s the real troll here?

      In my view the patent system is about the equivalent of the IRS is in the criminal justice system. They didn’t bust Al Capone for money laundering, murder, or smuggling – they busted him for cheating on his taxes.

      When a company gets busted for infringement, they are probably stealing quite a lot more than the claim the case hangs on.

      When you apply for a patent on a new device, often the very language of describing what you’re doing doesn’t even exist. I can remember staring at the ceiling trying to think of words for parameters. Also with 4 year delays in issuance, [particularly with a nascent technology] it is often unclear what other people are doing and what is new so you really take a risk when you put your method out there, because you could get clobbered later by someone with a prior patent – because you’ve basically told them you’re infringing and how, not only that but you’re telling your competition how to do it.

      A patentee takes great risks. They deserve protection.

      Someone could be totally ripping my product off, with 99 features of 100 that are the same. The only ones I get to bust them with are the ones in the patent claims (that survive the test of time). It’s a very small bat.

      Not only that, but if you talk with attorneys, fighting a patent case can cost you upwards of $1M. Do you have $1M to play with? I don’t.

      There are contingent fee firms out there, but they hate these kinds of cases (the damages aren’t worth the effort) – not only that but you’d have a really hard time finding one that’s never done business with Disney or Autodesk (I ran into exactly that problem with one that was interested).

      I fought this case pro-se [no attorney] because I was pissed off. It was a real learning experience, but it’s empowering to know that you can, in fact, do it.

      I can’t discuss the settlement, however you can be pretty sure it wasn’t enough to cover the damage this thing’ll do but was enough to feel good about at least standing my ground and not being a complete puss.

      In my view, proper e-mail discovery would have revealed many references to my product and an intentional effort to integrate those ‘features’. Getting that stuff admitted into evidence can be tricky.

      Large and powerful corporations generally get what they want eventually, it is gratifying to take a reasonable chunk out of their ankles before they cream you.

      Posted by joe alter | February 28, 2012, 11:16 pm
      • You make it very difficult to pity you as the underdog when you take your David and Goliath story and reverse the roles on a smaller company like Peregrine Labs (makers of Yeti). Just as you don’t have the millions of dollars required to battle Disney, Peregrine doesn’t have the money to defend themselves against you. Peregrine’s tech is quite different from Shave’s. Yeti was built from the ground up not to rely on UVs for hair placement, so an artist can easily modify the underlying geometry without needing to restart the groom from scratch. It also has quite a lot of other innovations. I would love a more technical explanation of how Yeti violated your patent.

        As far as I can guess, you saw enough superficial similarities to send them a cease and desist, which cost you nothing but a stamp (or did you email it?). Then Peregrine Labs was staring down the barrel of a legal battle they couldn’t afford, even though they’ve invested years on a product that uniquely solves weaknesses inherent in yours.

        I will not be surprised when I see a new version of Shave down the road that “borrows” Yeti’s concepts, followed shortly by another patent with your name on it. It’s their fault for not protecting themselves, right? You’re a smart businessman, I’ll give you that. I respect that you have the knowledge and perseverance to work within the system to protect and fight for your product, but once you start stomping on smaller companies with unique ideas your cause begins to seem much less righteous.

        So, given that Yeti has a novel approach to fur, what aspect of Yeti violated your patent? In your opinion, would it be possible to create a hair/fur system that did not violate your patent? Or did you manage to make it broad enough (placement of guide curves in world space is pretty broad) to prevent that?

        Posted by Chuck Norris | May 3, 2012, 2:05 pm
        • I did not even accuse Peregrine of infringing. I simply notified them that the Disney technology (which they claimed to be using in their advertising) was the subject of a suit and that they should not be distributing it. They made their OWN determinations (on their lawyer’s guidance) and decided not to publish in the US at all.
          Anyway , I don’t want your sympathy, but it would be great if you guys would stop nipping at my heels quite so persistently everywhere I go.
          Also, for your information, Shave does not rely on UV’s -or- topology, you can transfer hair grooms from a head to a cow if you want, the perigrin development is -totally- derivative in about a 100 different ways – their lawyers and their public spin on all this have just been a total pain in my ass and they’ve completely lost any sympathy I might have had for them originally.

          Posted by joe alter | June 6, 2012, 12:52 pm
          • Mikka,
            (for some reason I can’t reply to your below comment)
            Good to know, I’ll just take a time machine back to 1991 and ask you again.

            I think you don’t understand, patents are not written in stone.

            First of all, if so motivated, anyone can contest either elements of a patent’s claims or the whole patent itself with the patent office.

            But you don’t even have to do that, you can just disregard the claims which have prior art that you can document that does everything in the claim.

            But read them carefully, it only takes one word in that claim to differentiate it from prior work (it’s called a ‘narrowing’ item). What would be patented in that particular claim would be the combination that the narrowing item brings, and only that combination – it does not ‘ignore’ the prior art or somehow co-opt the invention of it.

            As I said, there’s plenty of prior art that uses guides in one form or another (a lot of my own work in fact) – there are, however narrowing terms in that claim which I feel keep it valid.

            Also as I said, i feel they are not the “center of gravity” of the patent, it’s what happens inbetween them (beyond interpolation)

            People that have this level of emotional hatred for patents and patent holders, do not understand the limitations of patents, or how vulnerable they are (not just when you file it, but for their whole lives) to a fact based refutation of any claim. You don’t even have to file anything with the patent office, this type of exchange of facts usually occurs between parties before a case is even filed – facts are facts.

            Joe

            Posted by joe alter | June 6, 2012, 5:24 pm
          • Thanks for the answer Joe, but then I don’t understand. What are exactly the patent assets that you feel Disney (or other software houses) may have infringed? I mean, from your answer I understood that the use of guide hair and interpolation are not actually the problem (did I understand it correctly?). Than what exactly is the matter of the dispute?

            Posted by Mikka Morgan | June 6, 2012, 5:43 pm
  4. Hey Joe, thanks for your detailed reply. I apologize if I appeared trollish by posting those links, but I do have trouble accepting the validity of your patent (and yes, I have read it).

    I know for a fact that guide hairs were being used at C.O.R.E. in 1999 on The Nutty Professor 2, as I worked on that film (although not on the fur system). I also know for a fact that the developers of the system used on that film were not aware of your work, and that it was a natural extension to a purely skin-driven fur system used on earlier projects. We continued to develop that system for additional projects (including 2003-2006’s The Wild).

    I despise software patents. Competition is what drives innovation, and if someone else does it better using the same ideas, tough. Step up and make a better product.

    best,
    -Mark

    Posted by Mark Visser | February 29, 2012, 9:00 pm
    • Mark –
      >I despise software patents. Competition is what drives innovation, and if someone else does it better using the >same ideas, tough. Step up and make a better product.

      They’re entitled to patent the things that they’re doing ‘better’.

      However, plagiarizing someone else’s work – putting your name on it, then giving it away to all their customers, what’s that? “better”?

      >I know for a fact that guide hairs were being used at C.O.R.E. in 1999 on The Nutty Professor 2, as I worked on >that film (although not on the fur system). I also know for a fact that the developers of the system used on that film >were not aware of your work, and that it was a natural extension to a purely skin-driven fur system used on earlier >projects. We continued to develop that system for additional projects (including 2003-2006′s The Wild).

      Excuse me, but I know “Spaz” since ’91 when I worked for him on “The Mask”, CORE certainly was aware of my work when they re-wrote that stuff in 2003 and even had licenses of my product – however they were not the subject of this suit.

      People crawl out of the woodwork with angry accusations on these kinds of things all the time – this is what the courts are FOR, so that the facts can be examined without all the smarm. So that an inventor doesn’t have to be the subject of a thousand hungry jealous pecking beaks while trying to get at the actual truth.

      Someone wants to step up and dispute the facts with actual evidence, they can. And their facts also have to stand up to counter argument. You don’t get to just slap them on the table and say “ha! so there!”

      If you think the patent is invalid, you can challenge it. You don’t even have to go to court, just send the USPTO your evidence and a nice note. You want their address?

      What’s to “despise” about that?

      Doesn’t everyone deserve a chance to be credited for their work? Doesn’t everyone deserve to have a forum of reason to dispute someone else’s assertions?

      What even lead you to this message board to piss on me if it wasn’t googling my name or product? You certainly don’t strike me as someone who hangs around patent websites.

      I don’t know you that I’m aware of.

      I’m really not understanding what point you’re trying to make here.

      What is the point you are trying to make?

      ?

      Posted by joe alter | March 1, 2012, 12:25 am
      • Joe, you couldn’t be more right. Good luck. The fact that more and more companies are using your novel methods only proves that you came up with the right idea.

        Posted by nikos | May 1, 2012, 7:39 pm
  5. Well, I’m quite confused about the whole dispute. I mean, if one creates an application that:
    – creates a number of spline curves
    – allow to move their points using the mouse
    – interpolate to create more curves

    is that infringing a patent of any kind? Then almost each 3D modeling application is subdue to patent infringment.

    Posted by Mikka Morgan | May 7, 2012, 4:59 am
    • — snip
      Thanks for the answer Joe, but then I don’t understand. What are exactly the patent assets that you feel Disney (or other software houses) may have infringed? I mean, from your answer I understood that the use of guide hair and interpolation are not actually the problem (did I understand it correctly?). Than what exactly is the matter of the dispute?
      — snip

      That’s not an answer I would give you fliply, in-fact the whole purpose of a case is to examine exactly that question in minute detail. I’ve made a lot of statements here that fill those blanks in quite a lot of detail that you need to actually read, as does the actual complaint (which is available above), and is outlined in the patent spec itself.

      — snip
      Well, I’m quite confused about the whole dispute. I mean, if one creates an application that:
      – creates a number of spline curves
      – allow to move their points using the mouse
      – interpolate to create more curves

      is that infringing a patent of any kind? Then almost each 3D modeling application is subdue to patent infringment
      — snip

      If the claims were that broad, the whole patent would be 3 lines long and almost surely rejected.
      Though, worth mentioning, those are not things that modeler’s used to do. As a frame of reference as to the timeline here, Maya didn’t even exist yet.

      If you want to understand what’s going on, you’ll have to do the homework.

      Posted by joe alter | June 6, 2012, 5:57 pm
      • > I did not even accuse Peregrine of infringing. I simply notified them that the Disney technology (which they claimed to be using in their advertising) was the subject of a suit and that they should not be distributing it. They made their OWN determinations (on their lawyer’s guidance) and decided not to publish in the US at all.

        > Their advertising said they were using “Disney XGen technology” in their press release, that is the beginning, middle and end of why they were notified of the Disney suit. I really couldn’t give a rat’s ass about Yeti, or Perigrin – not now and not then, our product is substantially better and in use by a significant portion of the industry, they hadn’t even sold 1 copy in the US in the 4 months since it was released

        It *really* seems like Peregrine was not so eager to stop selling their product in America, and yet clearly they did. As you describe it, you notified them because they advertised that they were using Disney tech (which turned out to be unrelated SExpr) and somehow, they understood this to mean that you felt they were in violation of your patent. So, if this was a misunderstanding and Peregrine is not actually in violation of your patent, and Peregrine is such a small threat anyway, why not throw out the contract and let them sell in America? Beat them the old fashion way.

        Posted by Chuck Norris | June 6, 2012, 11:22 pm
  6. >It *really* seems like Peregrine was not so eager to stop selling their product in America, and yet clearly they did. >As you describe it, you notified them because they advertised that they were using Disney tech (which turned out >to be unrelated SExpr) and somehow, they understood this to mean that you felt they were in violation of your >patent. So, if this was a misunderstanding and Peregrine is not actually in violation of your patent, and Peregrine >s such a small threat anyway, why not throw out the contract and let them sell in America? Beat them the old >fashion way.

    yep, a couple cautionary tales to be learned here.

    Don’t send an aggressive numbskull of an attorney after someone if you’re not sure you’re being sued, pick up a phone and try and have a friendly conversation with them, particularly if know you’re picking their pockets with your product.

    Whether they are infringing or not is no longer legally germane, they asked me to sign an agreement with specific terms, on my half it’s a blanket waiver, on their half they stay out of the US.

    Cautionary tale number 2, if you sign a highly restrictive agreement with someone – don’t stick your thumb in their eye right after, if it’s within their power to lift some of those restrictions, try being nice – don’t post protests on your web site. I asked him to work with me to tone done the rhetoric on his site, he refused (correction, his nutball of a lawyer “rejected” my request outright).

    Out of my hands, they’ve let this fester way too long to just let them off the hook.

    Posted by joe alter | June 6, 2012, 11:49 pm

Trackbacks/Pingbacks

  1. Pingback: Of The Patent System, Risk Taking And ‘Not Being A Complete Puss’ — An Inventor Speaks Out « Gametime IP - March 1, 2012

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

Follow

Get every new post delivered to your Inbox.

Join 308 other followers

%d bloggers like this: