You Didn’t Quite Catch It – Judge Gardephe Dismisses Several Allegations Of Patent Infringement
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.” 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 claimed that Adobe provided “step-by-step instructions, encouragement, and direction on how you can create a Cinemagraph.” Richardson also alleged Adobe had knowledge of at least one patent-in-suit as it was cited in Adobe’s prosecution for an unrelated Adobe Patent. The dispute centered on whether Richardson correctly alleged direct infringement of an “electronic file or message” in its product for the ‘644 Patent. In the case of the ‘998 Patent, the Court determined that Richardson had a plausible claim for direct violation. The dispute centered on whether Adobe’s products included a “graphic image stored in memory.” The Court determined, however, that the
adequately alleged that Adobe was selling Cinemagraph images. Each of the patents in suit included a claim restriction for “capturing” an Image. The Court found Richardson had not “demonstrated that Adobe had induced its customers” to perform the “capturing” step. “To create a Cinegif, or Cinemagraph, one must start with an image that someone has captured.
But, just because someone has captured an image does not mean the person creating a Cinegif or Cinemagraph also captured that image[complaint].” 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 rejected Richardson’s claims of pre-suit willful infringing, which were based on a reference to the ’587 patent while prosecuting an unrelated Adobe 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).
