Richardson v. Adobe, Inc.

Background

Douglas G. Richardson alleged that Adobe, Inc. directly, indirectly, and willfully infringed five patents concerning animated image files and methods for creating them. The patents-in-suit were U.S. Patent Nos. 7,388,587, 7,629,977, 8,035,644, 11,232,768, and 11,263,998. Richardson alleged that Adobe marketed and sold images called “Cinemagraphs” and encouraged users to create them through tutorials involving Adobe Premiere Pro and Adobe After Effects.

Adobe moved to dismiss the First Amended Complaint under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint adequately states a legally plausible claim. Adobe argued that Richardson had not adequately alleged direct infringement, induced infringement, or willful infringement, including the required knowledge of the patents before the lawsuit.

Direct Infringement

The court granted Adobe’s motion as to Richardson’s direct-infringement claim involving the ’644 Patent. The relevant claim required an “electronic message” containing a web-enabled graphic file. The court held that the First Amended Complaint did not adequately explain how Adobe made, used, offered to sell, or sold a product that itself was an electronic message. The court found that Richardson’s assertion that Adobe hosted electronic messages containing Cinemagraphs was conclusory and insufficient.

The court denied Adobe’s motion as to the direct-infringement claim involving the ’998 Patent. That patent covered a graphic file stored in memory. The court held that Richardson plausibly alleged Adobe sold Cinemagraph images and that an image file could satisfy the patent’s graphic-file element. The court also explained that Richardson was not required to plead infringement element by element at this stage, so long as the complaint gave Adobe fair notice of the activity accused of infringement.

Induced Infringement

The court granted Adobe’s motion as to Richardson’s induced-infringement claims. Induced infringement requires an underlying direct infringement, and a method patent is not directly infringed unless all required steps are performed by, or attributable to, one entity. Each independent method claim at issue included a step requiring someone to capture images from a location.

Richardson relied on Adobe tutorials and instructions. The court concluded that the cited tutorial showed that the narrator had captured footage but did not instruct viewers to perform the required capturing step. The court also rejected reliance on instructions telling users to find or choose existing footage, because the patents required capturing images. Richardson therefore had not adequately alleged that Adobe induced another person or entity to perform every step of the patented methods.

Willful Infringement

The court addressed willful-infringement allegations that remained after its rulings on the direct- and induced-infringement claims. It held that Richardson had not adequately pleaded Adobe’s pre-lawsuit knowledge of the ’998 Patent. The fact that a patent examiner had cited the ’587 Patent during prosecution of an unrelated Adobe patent application did not establish knowledge of the ’998 Patent, and knowledge of a patent family did not establish actual knowledge of each patent.

The court nevertheless held that Richardson adequately pleaded willful infringement based on conduct continuing after the lawsuit began. The complaint alleged that Adobe knew of the ’998 Patent and continued infringing activity despite that knowledge. The court stated that the filing of a complaint can support an inference that continued infringement was deliberate at the pleading stage.

Disposition

The opinion states that Adobe’s motion to dismiss was granted in part and denied in part. In the conclusion, the court states that the motion was granted as to Richardson’s direct- and willful-infringement claims premised on the ’587 Patent and his indirect-infringement claims, and was otherwise denied. The body of the opinion separately states that the motion was granted as to the direct-infringement claim involving the ’644 Patent and denied as to the direct-infringement claim involving the ’998 Patent. The court granted Richardson leave to move to file a Second Amended Complaint, and granted his motion to file an amended opposition brief correcting citations. The opinion does not state that any claim was dismissed with or without prejudice.