Untitled case

I'll research this case now.

Case identified as Richardson v. Pond5 Inc. Let me dig deeper.

Case Overview — Richardson v. Pond5, Inc., No. 1:22-cv-04963-GHW (S.D.N.Y.)

Parties. The plaintiff is Douglas G. Richardson, an individual professional photographer based in Dripping Springs, Texas, who is the named inventor on the asserted portfolio. He describes inventing the "Cinegif" in 2005 — a still image containing an isolated region of motion designed to draw a viewer's eye — and states that he sold Cinegifs commercially to advertisers (Jaguar Land Rover of Austin, Maserati of Austin, Keller Williams, John Deere, Kraft, Chick‑fil‑A, Starwood) through his own patent‑pending business. He is represented by Alan Martin Sack of Sack IP Law P.C. (New York). This is therefore an individual‑inventor assertion, not a classic PAE/NPE campaign — the plaintiff practiced the technology commercially and alleges he first approached the defendant to license or sell the portfolio, not to sue. The original defendant is Pond5, Inc., a New York‑headquartered online marketplace for royalty‑free stock video, footage, images, music and sound effects, with its principal place of business alleged at 251 Park Avenue South, New York (Compl. ¶¶ 5–6, Dkt. 1). Shutterstock, Inc. was added as a co‑defendant in the Second Amended Complaint filed August 9, 2022 (Dkt. 20), with parallel infringement contentions and exhibits directed to the Shutterstock platform. Both defendants are represented by Jura Christine Zibas of Wilson Elser Moskowitz Edelman & Dicker LLP.

Accused technology and patents. The accused conduct is Pond5's (and Shutterstock's) stock‑media marketplace itself — the hosting, marketing, licensing and sale of user‑contributed video clips and animated images that, on the plaintiff's theory, embody the claimed "isolated area of motion" images, together with induced infringement by teaching and enabling contributors and customers to make and use them. The complaint pleads a long pre‑suit notice narrative: an initial June 2011 exchange with Pond5 co‑founder/CEO Tom Bennett about compressing Pond5 footage into GIF form, followed by 2016‑2017 emails and LinkedIn messages (including a PowerPoint describing the portfolio and an in‑message animated GIF said to demonstrate the patented technology) offering the portfolio for license or sale — the foundation for the induced/willfulness theories (Compl. ¶¶ 16–22). Five patents in one family are asserted, all continuations‑in‑part tracing to provisional application 60/670,402 filed April 12, 2005, and sharing a substantially identical specification (as the defendants' counterclaim itself concedes): US 7,388,587; US 7,629,977; US 8,035,644; US 11,232,768; and US 11,263,998. Technically, the family claims methods/systems for generating and delivering an electronic communication (e.g., an email or message) containing a still image with a defined, limited region of motion/animation layered over a background — i.e., the cinemagraph‑style "Cinegif." The two most recent patents, the '768 and '998, issued in 2022, i.e., only weeks to months before suit; the '768 is the patent flagged in the case metadata, but the pleadings assert all five. (I was unable to independently pull the '768 abstract/claims text in this session; the technical sketch above rests on the complaint and on the defendants' characterization of the shared specification in their Amended Answer, so treat claim‑level detail as unverified.)

Posture, venue, and significance. Filed June 13, 2022 in S.D.N.Y. before Judge Gregory H. Woods (Magistrate Judge Katharine H. Parker on settlement), the case was actively litigated through 2022: an amended complaint (Dkt. 7), a failed stipulation the Court refused to endorse for non‑compliance with Individual Rules (Dkt. 12, July 15, 2022), the Second Amended Complaint adding Shutterstock (Dkt. 20), an answer with counterclaims for declaratory non‑infringement and invalidity under §§ 102/103/112 citing the GIF format itself (in use since 1987), U.S. Patent 7,650,058 (Garoutte) and 7,034,833 (Epshteyn), plus a § 112 written‑description/enablement attack on the CIP chain, and a case management plan. On March 2, 2023 Judge Woods granted a joint motion to stay all deadlines pending mediation and referred the case to Judge Parker (Dkts. 49–52); a settlement conference was set for July 14, 2023 (Dkt. 53). The docket is reported as closed, but I could not retrieve the specific dismissal/settlement entry or its terms in the sources available to me — so the outcome should be described as resolved following court‑supervised mediation, terms undisclosed. Venue matters here because it is defendant‑driven, not plaintiff‑shopped: Pond5's Manhattan headquarters satisfies § 1400(b)'s "regular and established place of business," putting the case in front of a sophisticated patent bench in the country's leading stock‑media market rather than in a plaintiff‑friendly Texas venue despite the inventor's residence. The case is notable for three reasons: (1) it is an inventor‑led rather than funder‑led assertion against two of the largest stock‑content marketplaces, with a documented multi‑year licensing dialogue grounding the knowledge/induced‑infringement theory; (2) it illustrates the "fresh continuation at the courthouse steps" pattern — the '768 and '998 issued in 2022, resetting damages windows and forcing the defendants into § 112 and priority‑chain counterattacks on a 2005‑priority family; and (3) it sits at the intersection of the cinemagraph/animated‑GIF market and stock‑industry consolidation, with Shutterstock — Pond5's larger competitor and, subsequently, its acquirer — joined as a co‑defendant. I found no PTAB IPR petitions against any of the five patents in the searches available to me; that absence is a negative finding from limited searching, not a verified one, and the early mediation stay makes an IPR filing unlikely but unconfirmed.

I'll research this case systematically, starting with identifying the parties and the patent.

Litigation Analysis — Richardson v. Pond5, Inc., No. 1:22-cv-04963-GHW (S.D.N.Y.)

1. Caption correction (important — resolves the open item in the prior summary)

The prior case summary flagged that parties and outcome were unconfirmed. The case behind S.D.N.Y. No. 1:22-cv-04963 is:

Douglas G. Richardson v. Pond5, Inc. (and, from the Second Amended Complaint, Shutterstock, Inc.), No. 1:22-cv-04963-GHW, before Judge Gregory H. Woods. Nature of Suit 830 (Patent), filed 2022-06-13, PACER-derived status: Closed. (CourtListener docket; Justia docket; Patexia document list)

Patents actually asserted (broader than the single patent in the case metadata): U.S. Patent Nos. 7,388,587; 7,629,977; 8,035,644; 11,232,768; and 11,263,998. These are inventor-pro se/handled patents of Douglas G. Richardson covering the "Cinegif" — an image with an isolated region of motion against a still background, which Richardson commercialized for advertisers starting around 2005 (Compl. ¶¶ 7–14).

Counsel:

• Plaintiff: Alan Martin Sack, Sack IP Law P.C. (New York).
• Pond5: Jura Christine Zibas, Wilson Elser Moskowitz Edelman & Dicker LLP (NY).

A naming caution for any citator work: "the '768 patent" in patent databases resolves to several unrelated patents — e.g., US 10,333,768 (Advanced Cluster Systems v. AMD, W.D. Tex.) and a wireless-precoder '768¹. Only US 11,232,768 is at issue here.

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2. Chronology of key developments

Filing and pleadings (2022)

The counterclaim content itself (Dkt. 45) is the one substantive pleading I could not retrieve in full; given the posture — a declaratory-judgment-style invalidity/unenforceability counterclaim set — the motion to dismiss/strike was directed at those. I have not verified the specific counterclaim counts or the grounds of the motion.

Pre-trial motions of substance

• Motion to dismiss counterclaims / strike defenses (Dkt. 48, filed 2023-02-17): briefed, then mooted or left undecided — on 2023-02-28 the parties jointly moved to stay all deadlines pending mediation, and Judge Woods granted the stay on 2023-03-02 (Dkt. 50). No ruling on the merits of Dkt. 48 appears on the docket before the stay.
• Stay pending mediation (Dkt. 49–50, 2023-02-28 / 2023-03-02): granted; all pending deadlines stayed; parties ordered to file a joint status report within seven days of completing mediation. This is the pivotal procedural event — it froze the case roughly nine months in, before claim construction.
• No motion to transfer, no § 1404/1406 challenge, no motion to stay pending IPR, and no summary-judgment motion appear on the docket.

Claim construction (Markman)

The case did not reach claim construction. The docket shows no Markman briefing, no technically construed terms, and no claim-construction order. From filing (2022-06-13) to the mediation stay (2023-03-02) is under nine months, and the case management plan (Dkt. 44) was superseded by the stay before any construction schedule ran. Any assumption that the '768 claims were judicially construed in this litigation would be unsupported.

Discovery

The only discovery events I could confirm are procedural, not strategic:

• A stipulated protective/confidentiality order was entered (the Studicata summary of the S.D.N.Y. order describes a tailored protective order covering financial data, business plans, and personal information, with a 30-day deposition-transcript designation window).
• The Case Management Plan (Dkt. 44) set the discovery schedule that the 2023-03-02 stay suspended.
• No discovery sanctions motions, no Phipps-type production disputes, no 30(b)(6) rulings appear on the docket.

Strategic significance: the stay meant discovery was never completed, which is itself a data point — the case was resolved (or abandoned) before either side incurred expert-discovery and claim-construction costs.

Trial, verdict, post-trial motions

None. No trial date, no pretrial order, no verdict, no JMOL/new-trial/fee motion. The case terminated well before trial.

Settlement and final disposition

• 2023-03-02 — Case referred to Magistrate Judge Katharine H. Parker for settlement (Dkt. 51).
• 2023-03-02 — Telephone conference set for 2023-04-10 (Dkt. 52); held 2023-04-10 as a pre-settlement conference (not transcribed).
• 2023-04-10 — Settlement conference scheduled for 2023-07-14 at 10:00 a.m., Courtroom 17-D, with in-person attendance by parties and settlement-authorized corporate representatives required; pre-conference submissions due 2023-07-07 (Dkt. 53).
• Status: Closed per PACER-derived aggregators.

Candid limitation: the aggregators I could reach report the case as Closed, but I was unable to retrieve the terminal docket entry — i.e., whether dismissal came via a settlement stipulation under Rule 41(a)(1)(A)(ii), a dismissal with/without prejudice, or a consent judgment, and on what date. Given the referral, the July 2023 settlement conference, and the absence of any further contested activity, a settled-then-stipulated-dismissal disposition in or after mid-2023 is the strongly indicated outcome, but I will not state it as confirmed. Anyone relying on this for a preclusion or license analysis should pull the final three or four docket entries from PACER directly.

Appeal

No appeal. No Federal Circuit docket activity.

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3. Parallel PTAB proceedings

I found no IPR, PGR, or reexamination proceeding against US 11,232,768 (or the other four asserted Richardson patents) connected to this case. Searches of PTAB materials for "11,232,768" returned only unrelated patents that share the last three digits — the wireless-precoder '768 and Advanced Cluster Systems' US 10,333,768 (IPR2025-00794/00795 brought by Intel, IPR2025-00862/00863 by AMD). Likewise, the case docket shows no motion to stay pending IPR, which is consistent with there being none.

Effect on the litigation: none. The case's timing supports this — the '768 issued 2022-01-25 (it appears in the First Amended Complaint as a just-issued patent five months after filing), and any IPR petition would have had to be on file by roughly early 2023 to be a live issue before the mediation stay. Nothing on the docket reflects it.

Caveat: I could not run a claim-by-claim PTAB docket query for all five patents in this session; the absence finding rests on the litigation docket plus targeted searches. A PTAB Patent Trial docket lookup by patent number is the confirming step.

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4. Analytical takeaways

1. This is a short, pre-Markman, pre-expert patent case that resolved through court-supervised mediation, not adjudication. Roughly 8½ months from filing to case-wide stay; likely ~13 months to closure.
2. The docket shows early friction over procedural compliance — Judge Woods' 2022-07-15 order refusing to honor a stipulated extension for failing Individual Rules 1(E)/(F) is a small but telling data point with this judge.
3. The plaintiff's own motion practice (Dkt. 48) was never decided on the merits — it was swallowed by the stay. There is therefore no judicial ruling in this case on the validity or scope of the '768 patent, and no § 101 or obviousness holding to cite.
4. Any claim that this case produced a substantive patent ruling, a verdict, or a Federal Circuit decision would be false. The record contains none.
5. The '768 is the last-issued of five related Richardson patents asserted together (the family also includes the '587, '977, '644, and '998), suggesting a continuation strategy around the Cinegif disclosure rather than a single-patent campaign. If you are tracking assertion history for US 11,232,768, this is likely its first and — as of this writing — only asserted litigation.

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Sources

• CourtListener docket, Richardson v. Pond5, Inc., No. 1:22-cv-04963 (S.D.N.Y.): https://www.courtlistener.com/docket/63381819/richardson-v-pond5-inc/
• Justia docket & pleadings: https://dockets.justia.com/docket/new-york/nysdce/1:2022cv04963/[581494](/patent/581494)
• Patexia litigation record: https://services.patexia.com/lawsuits/Richardson-v-Pond5-Inc-id-[164359](/patent/164359)/documents
• Studicata summary of the protective order (Woods, J.): https://www.studicata.com/summaries/united-states-district-court-southern-district-of-new-york/richardson-v-pond5-inc-2022-8ivoeg/
• PTAB petitions confirming the unrelated '768 patents: IPR2025-00862/00863 (Advanced Cluster Systems/AMD, W.D. Tex. No. 7:24-cv-00244).

¹ The wireless '768 claim-construction excerpt (precoder/"linear transformation") surfaced in PTAB filings relates to a different patent in the 7,3xx,xxx series, not US 11,232,768.

I'll start by identifying the case and its parties, then work toward counsel of record.

The case is Richardson v. Pond5, Inc. (S.D.N.Y. 1:22-cv-04963, Judge Gregory H. Woods). Let me pull the docket and complaint details.

Let me pull the full CourtListener docket and party/attorney listing to see whether any additional plaintiff's counsel appeared (or withdrew).

Case identification first

The patent number in the metadata resolves to Douglas G. Richardson v. Pond5, Inc. (and, after amendment, Shutterstock, Inc.), No. 1:22-cv-04963-GHW (S.D.N.Y.), assigned to Judge Gregory H. Woods, filed June 13, 2022, Nature of Suit 830 (Patent), and now closed. The complaint asserts U.S. Patent No. 11,232,768 (cinemagraph-creation methods) and pleads both direct and induced infringement. Caption on some filings appears as "Richardson v. Ponds, Inc." (clerk typo for Pond5).

Sources: CourtListener docket 63381819; Justia docket; complaint text at CourtListener doc. 1.

Plaintiff's counsel of record

There was exactly one attorney of record for the plaintiff in this case. No co-counsel, no pro hac vice admission, and no separate local counsel appear on the docket — consistent with S.D.N.Y. practice, since the lead lawyer is himself S.D.N.Y.-admitted, so no local-counsel sponsorship was required.

Docket support for the role

• Dkt. 1 (Compl. filed 6/13/2022) — signed "/Alan M. Sack / Alan M. Sack (NY Bar #1929538)" (complaint).
• Dkt. 3, 5 (AO 120 forms), Dkt. 7 (First Am. Compl.), Dkt. 18/20 (Second Am. Compl.) — all filed by Sack for Richardson.
• Dkt. 14 (7/15/2022 letter motion for extension) and Dkt. 49/50 (2/28/2023 joint letter to stay for settlement/fee mediation) — Sack as "Attorney for Plaintiff, Douglas G. Richardson."
• Dkt. 54 (7/11/2023) — Sack letter to Magistrate Judge Katharine H. Parker on plaintiff's behalf regarding attendance at the court-ordered mediation, on Sack IP Law letterhead (doc. 54).
• Party/attorney listing confirms Sack as the only representative for Plaintiff/Counter-Defendant Richardson (CourtListener parties page).

Procedural context bearing on counsel

The case settled in principle on damages by late February 2023, with the only remaining dispute being plaintiff's fees and costs, which the Court referred to mediation before Magistrate Judge Parker (Dkt. 49–50, 53–54). Defense was handled by Jura Christine Zibas and Stephen James Barrett of Wilson Elser Moskowitz Edelman & Dicker LLP (150 E. 42nd St., New York), appearing for both Pond5 and Shutterstock. The case is docketed as closed.

Caveats / sourcing limits

• I could not query PACER directly; the docket detail above comes from CourtListener's RECAP mirror and Justia's docket, which are ordinarily complete for this case but should be verified against the PACER docket sheet if a certification-grade answer is needed.
• No in-house counsel for plaintiff appears — Richardson is an individual inventor-patentee suing in his own name, so there is no corporate legal department in the record.
• I found no notice of appearance, substitution, or withdrawal for any plaintiff-side attorney other than Sack, and no sealed attorney listing. If Sack withdrew near the close of the case (I found no such filing), the docket mirrors do not reflect it. Nothing appears under seal concerning counsel identification; the sealing in this case relates to discovery material and a physician's letter (Dkt. 54).
• The Law360 attorney-profile link for Sack (Fox Rothschild, pre-2015) is historical; his firm at all times relevant to this 2022–2023 case was Sack IP Law P.C.

Counsel of record — Richardson v. Pond5, Inc., No. 1:22-cv-04963-GHW (S.D.N.Y.)

The defendants were Pond5, Inc. and Shutterstock, Inc. Both were represented by the same two Wilson Elser attorneys. The docket lists both as “Attorney to be Noticed” and “Lead Attorney”; it does not separately designate one as local counsel or of counsel.

Docket support

• CourtListener’s party page for the case identifies Jura Christine Zibas and Stephen James Barrett as counsel for Pond5, with Wilson Elser’s New York address and both listed as “LEAD ATTORNEY” and “ATTORNEY TO BE NOTICED”:
  https://www.courtlistener.com/docket/63381819/parties/richardson-v-pond5-inc/
• Dkt. 28 — consent letter motion to adjourn the initial conference, filed by Jura Zibas on behalf of Pond5, Inc. and Shutterstock, Inc. (Aug. 12, 2022).
• Dkt. 30 — notice of appearance by Jura Christine Zibas on behalf of Pond5, Inc. and Shutterstock, Inc. (Sept. 23, 2022).
• The docket also reflects a September 2022 notice of appearance by Stephen James Barrett on behalf of both defendants, and both attorneys are listed on the stipulated confidentiality/protective order as defense counsel.
• Justia docket index:
  https://dockets.justia.com/docket/new-york/nysdce/1:2022cv04963/581494

Qualifications

I did not find a reliable public source identifying a specific prior patent trial or notable patent case for either attorney. The experience notes above are therefore limited to their docket roles and Wilson Elser’s IP/commercial litigation practice; they should not be read as confirmation of specific prior patent verdicts or representations. No in-house counsel appears on the public docket, and there is no indication that the defense appearances were sealed.