Macromedia Countersues Adobe

A month and a half after Adobe Systems
sued it for patent infringement, Macromedia Inc. Wednesday fired back at
its assailant in the U.S. District Court for the District of Delaware.

Macromedia filed counterclaims for the infringement of several Macromedia
patents. This action was taken in direct response to Adobe’s lawsuit against
Macromedia for allegedly infringing two Adobe patents. Macromedia said the
claims made in the Adobe lawsuit are baseless.

Specifically, Macromedia counterclaimed against Adobe for infringing three
Macromedia patents: U.S. Patent No. 5,467,443 relates to changing blended
elements and automatic re-blending of elements and is infringed by its Adobe
Illustrator product. U.S. Patents Nos. 5,151,998 and 5,204,969 relate to
visually displaying and editing sound waveforms and are infringed by its
Adobe Premiere product.

Macromedia Chairman and CEO Rob Burgess told Wednesday afternoon that the whole courtroom scenario was “regrettable” and that his firm was reluctant to countersue for a number of reasons. He said it was taxing in money and resources and that his firm wished it could just continue serving customers instead of dealing with the legal issues Adobe brought to the table.

“We’re were good competitors and now they moved it away from the customers and into the courtroom,” Burgess said. “It’s not the way we do business.”

Burgess also said he was aware of the patent infringements his firm is countersuing Adobe for in 1996, but said he hadn’t planned on doing anything about it — that is, until Adobe sued. Burgess said issues of “prior art,” a clause which says a patent may be invalid when something published that is similar exists that predates the patent, flooded in to Macromedia from all over the world concerning certain aspects of Adobe’s Xcel product.

Burgess said he thought the case might play out over a few years.

Adobe did not return calls seeking comment Wednesday afternoon.

The turbulence began in August when Adobe claimed Macromedia allegedly
infringed on U.S. Patent No. 5,546,528 by tabbed palette features of certain
Macromedia products. The tabbed palette is Adobe’s user interface for
displaying multiple sets of information
on the computer screen.

On September 18, Adobe amended its complaint to include an additional claim
of infringement of U.S. Patent No. 6,084,597 by image rendering features of
Macromedia Dreamweaver and Macromedia Flash products.

The seeds of discontent seem to have been sown in 1996, when Adobe first
requested that Macromedia stop creating products that Adobe deemed were too
similar to its own. Claiming the patent was invalid and unenforceable,
Macromedia told them as much in 1996, and readvised them when they last
contacted Macromedia in May, 1999.

However, Adobe’s President Bruce Chizen said in August his firm had asked
its competitor several times of the infringement.

“Adobe will not be the R&D department for its competitors,” Chizen said in a
statement issued in August. “Our patent and other aspects of our user
interface are key to the user experience and functionality of our products;
they are essential to differentiate our products and brand from others.”

While Macromedia insisted Adobe’s patent is invalid under the “prior art”
clause, Adobe
spokesperson Linda White said all relevant prior art was

White also said Adobe waited as long as it could before filing suit, but
that her company warned Macromedia several times between
1996 and 2000 that the smaller firm was infringing by copying image editing
products such as X-RES and applications such as FreeHand. White said Adobe
is confident the court will find in its favor.

“We wouldn’t have filed if we didn’t think we could win,” White said last
month. “It’s costly and distracting to go

to court. We just didn’t have a

Steven Dellett, a patent lawyer at the Dallas-based Fulbright & Jaworski,
said it was hard to tell how the suit would shake down
because very few Internet-related patent suits have made it all the way
through litigation.

“The significance of this patent depends on whether or not there are
commercially viable alternatives for Macromedia,” Dellett said.
“They have to decide whether it is worth the cost of litigation to fight it,
or if they want to find other solutions.”

As for Macromedia’s “prior art” argument, Dellett said the claim is used in
nearly every patent case.

“Parties may also rexamine the patent,” he said. “In this particular case,
Adobe’s patent is very brief and not very technical — only
two-and-a-half pages long, which is unusual. This may call into question the
validity and may be a cause for reexamination.”

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