IP Law Daily, PATENT—S.D.N.Y.: Adobe must face ‘cinegif’ infringement claims, but avoids induced infringement, (Sep 12, 2024)

By Kevin M. Finson

Claims related to induced infringement of patents directed to images with areas of motion were dismissed because the video tutorials which allegedly induced the infringement did not teach all of the steps in the claimed method.

While a patent owner plausibly alleged that Adobe, Inc., infringed four patents relating to “Cinegifs,” or images having isolated areas of motion, he did not plausibly allege that Adobe’s video tutorials induced users to infringe the asserted patents because tutorial language quoted in the complaint did not meet all of the claim limitations, the federal district court in New York City has ruled. In addition, the owner failed to allege infringement of the claims of a fifth asserted patent because there no evidence that Adobe met the electronic message limitation (Richardson v. Adobe, Inc., No. 2:22-cv-7114-PGG (S.D.N.Y. Sept. 10, 2024)).

Douglas Richardson was the owner of U.S. Patents Nos. 7,388,587 (the ’587 patent), 7,629,977 (the ’977 patent), 8,035,644 (the ’644 patent), 11,232,768 (the ’768 patent), and 11,263,998 (the ’998 patent), all of which were related to “Cinegifs,” which were images having isolated areas of motion. Richardson brought suit for infringement against Adobe, Inc. (Adobe), alleging that Adobe had sold images that infringed upon his patents and which also induced others to infringe by teaching how to produce infringing images on social media through its video tutorials. Adobe moved to dismiss for failure to state a claim.

Direct infringement. Adobe argued that direct infringement claims had not been stated as to the ’587 patent because that patent required an “electronic message,” i.e. an email, and there was nothing in the complaint alleging Adobe had used an email. The court found that the allegations as to infringement of this element were conclusory and there were no facts alleged from which it could conclude that Adobe’s accused products included an electronic message. The court found that the remaining patent claims, which required only a “graphic file stored in memory” instead of an “electronic message,” were properly pleaded.

Indirect infringement. Richardson had alleged that Adobe’s video tutorials taught the “capturing” of a first image of a scene as required by each of the asserted patents, but the court found that the quoted material from that tutorial found in the complaint did not address “capturing” but only suggested that users should find a video clip which showed continuous action. This did not meet the requirements of the claim language.

Willfulness. The court held that willfulness was plausibly alleged in Richardson’s first amended complaint at least as to post-suit activity by the allegation that the infringement had continued after filing of the original complaint.

The court granted the motion to dismiss as to all claims based on the ’587 patent and as to the induced infringement claims under all patents, and otherwise denied the motion.

The Case is No. 2:22-cv-7114-PGG.

Judge: Gardephe, P.

Attorneys: Alan Martin Sack (Sack IP Law PC) for Douglas G. Richardson. Jonathan Swisher (Arnold & Porter Kaye Scholer LLP) for Adobe, Inc.

Companies: Adobe, Inc.

Cases: Patent TechnologyInternet NewYorkNews