On September 10, 2024, District Judge Paul G. Gardephe (S.D.N.Y.) granted in part Defendant Adobe, Inc.’s motion to dismiss for failing to plead “facts sufficient to establish infringement.”
Plaintiff Douglas G. Richardson is a professional photographer with “several patents” related to “image[s] having an isolated area of motion that draws the viewer’s eye to a particular area of the image.” The technology is referred to as “Cinegif.” Richardson accused what Adobe refers to as a “Cinemagraph” as directly infringing two patents (the ’644 and ’998 patents) and inducing infringement of those two patents and the ’587, ’977, and ’768 patents. Richardson alleged that Adobe provided “step by step instructions, encouragement and direction on how to create a Cinemagraph.” Further, Richardson alleged that Adobe had notice of at least one of the patents-in-suit because it was cited during Adobe’s prosecution of an unrelated Adobe patent.
The Court found that Richardson “met the pleading requirements for alleging direct infringement” of only one of the two asserted patents with respect to direct infringement. For the ’644 patent, the dispute focused on whether Richardson properly alleged direct infringement for an “electronic message or a graphic file” in its product. The Court agreed with Adobe that the complaint “has not alleged how Adobe’s product constitutes an electronic message,” and granted Adobe’s motion to dismiss Richardson’s direct infringement claim as to the ’644 patent.
With respect to the ’998 patent, however, the Court found that Richardson did plausibly state a claim for direct infringement. The dispute focused on whether Adobe’s product included a “graphic file stored to memory.” The Court determined that “regardless of what file format a user saves its Cinemagraph in, the [complaint] adequately alleges that Adobe is selling Cinemagraph images.” The Court further stated that, at the pleading stage, “a plaintiff is not required to plead infringement on an element-by-element basis.” As a result, the Court denied Adobe’s motion to dismiss Richardson’s direct infringement claim as to the ’998 patent.
The Court granted Adobe’s motion to dismiss Richardson’s claims of indirect induced infringement of all of the patents-in-suit. Each of the patents-in-suit included a claim limitation for “capturing” an image. The Court found that Richardson did not “demonstrate that Adobe has induced its customers to perform the ‘capturing’ step.” “To create either a Cinegif or a Cinemagraph, an individual must begin with an image that has been captured by someone. But just because an image has been captured by someone does not mean that the person creating the Cinegif or Cinemagraph captured that image.” (emphasis added). As such, Richardson would not be able to show that Adobe induced its customers to perform “every single step of the method” and the Court granted Adobe’s motion to dismiss the indirect induced infringement claims.
Finally, with respect to willful infringement, the Court found that Richardson had a plausible claim for post-suit willfulness as to the ’998 patent (the only patent-in-suit remaining), because Adobe has refused to stop the allegedly infringing activity. The Court, however, rejected Richardson’s allegations of pre-suit willful infringement, which was based on reference to the ’587 patent during the prosecution of an unrelated Adobe patent application. The Court noted that “the law does not require an investigation; the law requires actual knowledge or its equivalent.”
While the court found it “unlikely that Richardson can adequately plead a direct infringement claim” or “any indirect induced infringement claims,” the Court determined that it was not impossible, and thus granted Richardson leave to file a Second Amended Complaint.
The case is Richardson v. Adobe Inc., Case No. 22 Civ. 7114 (PGG) (S.D.N.Y. Sept. 10, 2024).
