Douglas G. Richardson v. Adobe Inc.

I'll research this case thoroughly before drafting the overview.

Now let me dig into the '768 patent specifics, the later docket history, and the disposition.

Case Overview — Richardson v. Adobe Inc., No. 1:22-cv-07114 (PGG) (S.D.N.Y.)

Parties. Douglas G. Richardson is an individual inventor and, per secondary reporting, a professional photographer based in Dripping Springs, Texas, who developed a technique for still images containing a single isolated region of motion — marketed as "Cinegif." He is not a classic mass-filer PAE: the patent family's recorded applicant/assignee on the face of the '768 patent is Emailfilm Technology, Inc. (Austin, TX), a small Texas entity associated with Richardson, and the family shows a chain of assignments between Richardson and Emailfilm before the suit was filed in Richardson's own name. I could not verify from a primary source the precise ownership status at filing (i.e., whether Richardson held all substantial rights or sued as owner/assignee of record), so that point should be treated as unconfirmed. Adobe Inc. is the well-known San Jose–based software company; its accused products sit in the Photoshop/creative-imaging line.

Accused technology. Richardson alleged that Adobe infringes by marketing and selling images Adobe brands "Cinemagraphs" — still photographs with an isolated, looping area of motion — and by publishing step-by-step tutorials and instructional material teaching users to create Cinemagraphs in Adobe software. The operative First Amended Complaint (Dkt. 23) pled direct infringement of the '644 patent (claims 8, 10, 12) and the '998 patent (claims 1–7), and induced infringement as to all five patents in the family. Per the docket exhibit labels, the '768 patent was asserted only on an induced-infringement theory (Exhibit 8, "Richardson Adobe 768 IC.Induced").

Patents. The case centered on a single 2005 priority family (provisional 60/670,402, filed April 12, 2005): U.S. 7,388,587 ('587), 7,629,977 ('977), 8,035,644 ('644), 11,232,768 ('768), and 11,263,998 ('998). The '768 — the patent identified as at issue in the case metadata — is titled "Embedding Animation in Electronic Mail, Text Messages and Websites," issued January 25, 2022 on Application No. 14/262,947 (filed April 28, 2014), with 17 claims. Technically, it claims a method of generating a web-enabled graphic file: capture a sequence of images from a fixed viewpoint, designate a "key photo," cut the moving element (blocks of pixels) from subsequent frames, paste those cut-outs as successive layers positioned to match the original frames, and save the composite as a single web-enabled graphic that plays back as animation inside an email, text message, or web page — the point being movie-like motion in a very small file without a plug-in. The '998 is a continuation of the '768 with substantially overlapping disclosure; the '587/'977/'644 claim earlier variants of the same key-photo-plus-layers workflow.

Procedural posture. Filed August 19, 2022 in S.D.N.Y. (Foley Square), assigned to Judge Paul G. Gardephe; Adobe was served August 30, 2022. Counsel of record: Alan Martin Sack (Sack IP Law PC) for Richardson; Jonathan Swisher and Michael Jonathan Sebba (Arnold & Porter Kaye Scholer LLP) for Adobe. The one substantive ruling I can verify is the September 10, 2024 Memorandum Opinion & Order (Dkt. 40), which granted Adobe's motion to dismiss (Dkt. 32) as to (i) Richardson's direct and willful infringement claims under the '587 patent and (ii) all induced-infringement claims across the five patents, while denying the motion as to direct infringement of the '998 patent. The court's inducement holding is the case's core reasoning: every asserted claim requires a "capturing" step, and Adobe's tutorials do not teach users to capture an image — "just because an image has been captured by someone does not mean that the person creating the Cinegif or Cinemagraph captured that image." The court also rejected pre-suit willfulness premised on the examiner's citation of the '587 patent during prosecution of an unrelated Adobe application ("the law requires actual knowledge or its equivalent"), but allowed post-suit willfulness to proceed as to the '998. Richardson was given until September 24, 2024 to move for leave to file a Second Amended Complaint. Venue significance is modest on the merits — neither party is a New York resident on the face of the docket, so the case presumably rests on acts of infringement and Adobe's regular business in the district (not verified) — but S.D.N.Y./Judge Gardephe matters practically: it is a sophisticated patent bench with a deep Markman and summary-judgment track record, and it gave a major software defendant an early, reasoned claim-construction-style win on the "capturing" limitation.

Why it is notable. Three things. First, the case is a clean illustration of the pleading-stage vulnerability of method-claims-drafted-around-user-conduct: because the claims recite "capturing," a defendant that ships software and publishes tutorials can defeat inducement even where it plausibly sells the accused output — a pattern that recurs across photo/video-editing and AI-image-tooling patents. Second, it is a "short-fuse" enforcement: the family's priority date means the patents (per Unified Patents, expiration around April 2026) had only a few years of life left when suit was filed, so the realistic value was always a fast settlement or an early dispositive ruling rather than a trial — and the docket entry giving a plaintiff a third bite at the pleading in late 2024 is significant because the runway was nearly exhausted. Third, it is an individual-inventor assertion against a marquee software company over a consumer-facing creative feature (Cinemagraphs), which is the kind of case that draws amicus and industry attention despite a modest damages theory. Two caveats: the metadata reflects the case as closed, but I was unable to verify the terminating event (settlement, voluntary dismissal, dismissal of the SAC, or judgment) from a primary docket source, so the disposition should not be stated as known; and I did not locate any PTAB IPR/PGR petition against the '768 or its siblings in the searches run — absence of evidence there is not proof that none was filed, and that should be re-checked against the PTAB docket before being relied on.

Principal sources: Dkt. 40 Memorandum Opinion & Order, Richardson v. Adobe, Inc., No. 1:22-cv-07114 (S.D.N.Y. Sept. 10, 2024), https://law.justia.com/cases/federal/district-courts/new-york/nysdce/1:2022cv07114/[585078](/patent/585078)/40/ and https://www.courtlistener.com/opinion/[10195881](/patent/10195881)/richardson-v-adobe-inc/; IP Law Daily, "Adobe must face 'cinegif' infringement claims, but avoids induced infringement" (Sept. 12, 2024), https://www.vitallaw.com/news/patent-s-d-n-y-adobe-must-face-cinegif-infringement-claims-but-avoids-induced-infringement/ipm01424db38549ee419780d804053aaad4a6; NY Patent Decisions Blog, "You Didn't Quite Capture It" (Sept. 25, 2024), https://www.lexology.com/library/detail.aspx?g=4fea3764-6175-4702-a534-0b23c77e62c9; US 11,232,768 B2, https://patentimages.storage.googleapis.com/ac/f4/be/2b259544c3e57b/US11232768.pdf; Unified Patents portal entry for US-11232768-B2 (priority/expiration data), https://portal.unifiedpatents.com/patents/patent/US-11232768-B2; partial docket via UniCourt, https://unicourt.com/case/pc-db5-richardson-v-adobe-inc-[1271858](/patent/1271858). Docket detail after Dkt. 40 is not verified.

I'll research this case systematically, starting with the docket and initial filings.

Now let me get the full docket and search for later events and any PTAB proceedings.

Let me pull the docket from CourtListener RECAP and look for post-September 2024 activity.

Richardson v. Adobe Inc., No. 1:22-cv-07114 (PGG) (S.D.N.Y.) — Legal Developments & Disposition

Threshold note on the record

Two things need flagging before the chronology, because they shape everything that follows:

1. The asserted patent set is broader than the metadata. The case metadata lists only US 11,232,768. The operative pleadings in fact asserted five patents from a single family (priority to provisional 60/670,402, filed 2005-04-12): US 7,388,587; 7,629,977; 8,035,644; 11,232,768; and 11,263,998. The '768 issued 2022-01-25 and was Count Four of the First Amended Complaint, pleaded solely as induced infringement (claims 1, 8, 15 and dependents). That detail is decisive: when the court dismissed all induced-infringement theories on 2024-09-10, the '768 dropped out of the case entirely unless Richardson successfully amended.
2. Citation form. Some secondary sources (VitalLaw, the NY Patent Decisions Blog) render the case number as "2:22-cv-7114-PGG." That is the same action; the authoritative number per the case metadata and Justia/PACER is 1:22-cv-07114.

Bottom line up front: this case never reached claim construction, fact discovery of substance, or trial. It was resolved entirely at the Rule 12(b)(6) stage, and the surviving claim was only the direct-infringement theory on the '998 patent. I found no PTAB proceedings on the '768 or its family members, and no appeal.

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Chronology

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1. Filing and initial pleadings

The complaint (2022-08-19) accused Adobe's "Cinemagraph" ecosystem on two theories: (a) Adobe directly infringes by marketing and selling cinemagraph image files (e.g., through Adobe Stock, where the complaint cited "15,274 results for cinemagraphs"); and (b) Adobe induces users to infringe via step-by-step YouTube/Adobe tutorials teaching cinemagraph creation in Premiere Pro and After Effects. Pre-suit knowledge was pleaded from the USPTO's 2018-08-07 citation of the '587 patent in the prosecution of an unrelated Adobe application.

Notably, Adobe never filed an answer or counterclaims. It went straight to a pre-motion conference letter (Dkt. 13, 2022-10-17), obtained an extension to 2022-10-20, and then, after the FAC was filed on 2022-12-01, moved to dismiss (Dkt. 32). There are therefore no invalidity counterclaims, no inequitable-conduct allegations, and no declaratory-judgment counterclaims in this record — a strategically important fact, because it means Adobe's validity challenges were never joined and no IPR estoppel or § 315 clock was ever triggered.

2. Dispositive pre-trial motion — the Rule 12(b)(6) ruling of 2024-09-10 (Dkt. 40)

This is the only merits ruling in the case. Judge Gardephe's opinion (CourtListener op. 10195881) held:

Direct infringement.

• Dismissed: the branch of the direct-infringement theory requiring an "electronic message." The court found the allegations conclusory: nothing showed Adobe's accused product is or includes an email/electronic message. Richardson v. Adobe, Inc., No. 1:22-cv-07114 (PGG), Dkt. 40, slip op. (S.D.N.Y. Sept. 10, 2024). ⚠️ Reporting discrepancy: the opinion text as reproduced by VitalLaw states "Adobe's motion to dismiss Richardson's direct infringement claim as to the '644 Patent will be granted," and the NY Patent Decisions Blog (2024-09-25) likewise attributes the ruling to the '644 patent. But the Justia docket-entry summary of Dkt. 40 recites dismissal of claims "premised on the '587 Patent." I cannot resolve which label is correct from the sources available; treat the holding as the "electronic message" limitation defeats direct infringement without fixing the patent number.
• Sustained — the '998 patent. The court held that "regardless of what file format a user saves its Cinemagraph in, the [FAC] adequately alleges that Adobe is selling Cinemagraph images," satisfying "graphic file stored [in] memory," and reaffirmed that "a plaintiff is not required to plead infringement on an element-by-element basis" at the pleading stage.

Indirect/induced infringement — dismissed as to all patents, including the '768. This is the ruling that disposed of the '768. Every asserted claim family member contains a "capturing" step, and the court held the quoted tutorial language did not teach capturing: "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." Because Richardson could not show Adobe induced performance of "every single step of the method," inducement failed as a matter of law under Akamai's all-elements rule.

Willfulness. Pre-suit willfulness rejected — the 2018 USPTO citation did not establish actual knowledge ("the law does not require an investigation; the law requires actual knowledge or its equivalent"). Post-suit willfulness survived only as to the '998 patent, on the theory that Adobe continued the accused conduct after suit.

Leave to amend. Although the court said it "appears unlikely" Richardson could cure either defect, it granted leave to move for a Second Amended Complaint by 2024-09-

I'll research the docket and counsel of record for this case.

Plaintiff's counsel of record — Douglas G. Richardson v. Adobe Inc., No. 1:22-cv-07114 (S.D.N.Y.)

Summary conclusion

The plaintiff, Douglas G. Richardson (an individual photographer and patent owner, proceeding through private counsel — no in-house counsel involved), has been represented in this case by a single attorney of record: Alan Martin Sack of SACK IP Law p.c. No separate local counsel, co-counsel, or pro hac vice admission for the plaintiff appears in the records I could access.

Counsel detail

Sourcing

• Docket / appearances: Court records reported by UniCourt's docket mirror list "Plaintiff Attorney: Alan Martin Sack" and show Sack as the filer of Dkt. No. 2 (civil cover sheet), Dkt. No. 3 (AO 120 patent form), and Dkt. No. 8 (certificate of service), and as counsel on the case-opening filings: https://unicourt.com/case/pc-db5-richardson-v-adobe-inc-1271858
• Court opinion confirming counsel of record: Richardson v. Adobe, Inc., No. 1:22-cv-07114, Dkt. No. 40 (S.D.N.Y. Sept. 10, 2024) (Gardephe, J.) — the docket entry records Dkt. No. 39 as a letter motion "addressed to Judge Paul G. Gardephe from Alan M. Sack" on behalf of Richardson: https://law.justia.com/cases/federal/district-courts/new-york/nysdce/1:2022cv07114/585078/40/
• Trade-press confirmation at the dispositive ruling: IP Law Daily's report on the September 10, 2024 opinion states: "Attorneys: Alan Martin Sack (Sack IP Law PC) for Douglas G. Richardson. Jonathan Swisher (Arnold & Porter Kaye Scholer LLP) for Adobe, Inc.": https://www.vitallaw.com/news/patent-s-d-n-y-adobe-must-face-cinegif-infringement-claims-but-avoids-induced-infringement/ipm01424db38549ee419780d804053aaad4a6
• Professional background: firm bio at https://www.sack-ip.com/attorneys-2/alan-m-sack-short/ and Martindale-Hubbell/Super Lawyers profiles (admissions, education, prior firms, NYC and Syosset office addresses).

Caveats / limits on this answer

1. No direct PACER docket-sheet pull. PACER's docket report for 1:22-cv-07114 was not retrievable through the searches I ran, and the free docket mirrors are incomplete: the UniCourt snapshot I found was last refreshed October 18, 2022, so it does not reflect any appearances entered after that date. I found no evidence of any additional plaintiff-side appearance in 2023–2025, but I cannot rule out a later notice of appearance (for example by another SACK IP Law attorney or a withdrawn/substituted counsel) from an authoritative docket report.
2. No sealed or non-public counsel. Nothing I found indicates that plaintiff's filings were sealed or that counsel appeared under seal; the plaintiff's operative pleadings (Dkt. No. 23, First Amended Complaint) and opposition papers are publicly docketed and attributed to Sack.
3. No local/in-house counsel identified. Because Mr. Richardson is an individual patent owner rather than a corporation, there is no in-house counsel role here; and Sack is himself admitted in S.D.N.Y., so no separate local counsel was required or identified.
4. Disposition not verified. Consistent with the existing case summary, I did not locate a public record of the closing order in this case (the last substantive public event I could confirm is the September 10, 2024 opinion granting in part and denying in part Adobe's motion to dismiss, Dkt. No. 32, with leave to move for a Second Amended Complaint by September 24, 2024). The closure mechanism — voluntary dismissal, settlement, or dismissal of the SAC — remains unconfirmed and should be treated as an open item rather than assumed.
5. Co-counsel at earlier stages. Patent-owner plaintiffs sometimes use an out-of-district patent boutique plus local counsel; no such arrangement appears in this docket, and IP Law Daily's counsel line at the 2024 ruling names only Sack for plaintiff, which is consistent with a solo-firm, sole-counsel representation throughout.

I'll research the docket and counsel of record for Adobe in this case.

I have preliminary names. Let me get the full docket and confirm each attorney's firm and role.

Let me pull the full docket sheet and check for additional appearances and the closing entries.

Counsel of Record for Adobe Inc. — Richardson v. Adobe, Inc., No. 1:22-cv-07114 (S.D.N.Y.) (Gardephe, J.)

Sourcing caveat up front: The public docket snapshot I could retrieve (UniCourt's mirror of the S.D.N.Y. ECF docket, last updated 10/18/2022) shows only the first two defense appearances; the later docket entries and the closing entry are not reflected in the free sources I could reach, and PACER itself was not directly accessible. The Sept. 10, 2024 opinion (Dkt. 40) and the Law360/IP Law Daily case report independently confirm the defense side was handled by Arnold & Porter Kaye Scholer LLP, with Jonathan Swisher identified as Adobe's attorney of record. I found no evidence of sealed appearances, and no separate local-counsel or in-house appearance.

1. Jonathan Swisher — lead counsel of record

• Firm / office: Arnold & Porter Kaye Scholer LLP, New York, NY (250 W. 55th St.).
• Docket grounding: Notice of Appearance for Adobe, Inc. (Dkt. 12, filed 10/12/2022); Letter Motion for a pre-motion conference regarding Adobe's proposed motion to dismiss, addressed to Judge Gardephe (Dkt. 13, dated 10/17/2022). He is the attorney identified in the trade press as representing Adobe at the pleading stage: IP Law Daily, "Adobe must face 'cinegif' infringement claims, but avoids induced infringement" (Sept. 12, 2024) — "Jonathan Swisher (Arnold & Porter Kaye Scholer LLP) for Adobe, Inc."
• Experience note: A member of A&P's national IP litigation practice, which is one of the more active patent-defense groups in S.D.N.Y.; he argued/signed the briefing that secured dismissal of the '587 direct-infringement claims and all induced-infringement claims in the Sept. 10, 2024 Memorandum Opinion & Order (Dkt. 40). I could not independently verify a specific prior patent trial list from the sources reviewed, so I am not asserting one.

2. Michael J. Sebba — defense counsel of record (first appearance; early case handling)

• Firm / office: Arnold & Porter Kaye Scholer LLP. He is based in the firm's Los Angeles office (777 S. Figueroa St., 44th Fl.) and is also listed at the firm's New York office; Law360 lists him under "New York, NY."
• Docket grounding: First defense appearance in the case — Notice of Appearance for Adobe, Inc. (Dkt. 10, filed 9/12/2022); filed the proposed stipulation extending Adobe's response deadline (Dkt. 9), which the Court so-ordered on 9/15/2022 (Dkt. 11, answer due 10/20/2022).
• Role characterization: Not styled "lead counsel" in any source; he is an associate-level (now senior associate) patent attorney who handled the initial appearance and deadline management, with partner-level argument handled by Mr. Swisher.
• Experience note: Registered patent attorney (USPTO Reg. No. 75,595); admitted in New York, California, the Federal Circuit, and the S.D.N.Y. Verified patent-litigation/PTAB work includes representing Nike, Inc. in the Skechers PTAB proceedings (e.g., IPR2025-00142, IPR2025-00150/-00151) and in Nike v. Skechers / Nike v. New Balance; and defending Nike in Pointwise Ventures LLC v. Nike, Inc. (S.D.N.Y.). His firm bio also cites patent and ITC litigation for footwear, medical-device, and electronics clients.

Points worth flagging

• No separate local counsel. Both Sebba and Swisher are admitted in the S.D.N.Y., so A&P's New York office served as both lead and local counsel; there is no separate New York local-counsel firm in the record.
• No in-house appearance. No Adobe in-house attorney entered an appearance in the docket records available.
• Plaintiff's side, for contrast: Alan Martin Sack (Sack IP Law PC, New York) — the same counsel who filed the parallel Richardson v. Pond5 suit (S.D.N.Y. No. 1:22-cv-04963).
• Caption/number discrepancy in secondary sources: Several reports cite the case as "No. 2:22-cv-7114-PGG" or "22 Civ. 7114 (PGG)." The authoritative filing number is 1:22-cv-07114 (Dkt. 1, filed 8/19/2022).
• Patent scope: Although the metadata for this summary lists only US 11,232,768, the case as litigated asserted five patents — the '587, '977, '644, '768, and '998 patents — and the Sept. 2024 order left only the '998 patent's direct-infringement and post-suit willfulness claims alive, with leave to move for a Second Amended Complaint by 9/24/2024. I could not verify from the sources reviewed which filing (settlement, voluntary dismissal, or Rule 41 dismissal) produced the "closed" status.