DCT
1:22-cv-07114
Richardson v. Adobe Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Douglas G. Richardson (Texas)
- Defendant: Adobe, Inc. (California)
- Plaintiff’s Counsel: SACK IP Law p.c.
- Case Identification: 1:22-cv-07114, S.D.N.Y., 12/01/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of New York because Adobe maintains regular and established places of business within the district and has conducted substantial business and committed alleged acts of infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s "Cinemagraph" products and associated software tools for creating them infringe five patents related to methods for embedding isolated animation within electronic images.
- Technical Context: The technology concerns a method for creating hybrid still-and-video images, known as cinemagraphs, which isolate motion to a specific area of an otherwise static image to create an engaging and file-size-efficient animation for digital communications.
- Key Procedural History: The complaint alleges that the patents-in-suit have been previously enforced in other litigations and licensed to numerous licensees. It also alleges that Defendant had pre-suit knowledge of the patent family as early as August 2018, when the U.S. Patent and Trademark Office cited the lead patent during the prosecution of one of Adobe’s own patent applications.
Case Timeline
| Date | Event |
|---|---|
| 2005-04-12 | Earliest priority date for all patents-in-suit |
| 2005-01-01 | Plaintiff allegedly invents "Cinegif" technology |
| 2008-06-17 | ’587 Patent issued |
| 2009-12-08 | ’977 Patent issued |
| 2011-10-11 | ’644 Patent issued |
| 2017-02-06 | Adobe allegedly begins marketing and selling "Cinemagraphs" |
| 2018-08-07 | Plaintiff alleges Adobe received notice of ’587 Patent via USPTO citation |
| 2019-02-15 | Adobe publishes After Effects tutorials for creating cinemagraphs |
| 2019-09-18 | Adobe promotes Premiere Pro tutorials for creating cinemagraphs |
| 2022-01-25 | ’768 Patent issued |
| 2022-03-01 | ’998 Patent issued |
| 2022-12-01 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,388,587 - “Method For Embedding Animation In Electronic Mail And Websites”
- Patent Identification: U.S. Patent No. 7,388,587, "Method For Embedding Animation In Electronic Mail And Websites," issued June 17, 2008.
- The Invention Explained:
- Problem Addressed: The patent’s background section describes the technical challenge of transmitting dynamic images ("movies" or "animations") over electronic channels, noting that such files are typically large and slow to download, which is inefficient. It also notes that alternative techniques like Flash are complex to program and require specific plug-ins on the receiving device. (’587 Patent, col. 2:1-19).
- The Patented Solution: The invention proposes a method to create an efficient animation. The process involves capturing a sequence of photographs, designating a first photo as the static background (the "naked photo"), editing subsequent photos to isolate, or "cut," an element that is in motion, and then pasting these isolated moving elements as layers onto the static background photo. The final result is saved as a single web-enabled graphics file that can create the illusion of motion with a much smaller file size than a traditional video. (’587 Patent, Abstract; col. 2:24-44).
- Technical Importance: This technique offered a way to deliver the visual engagement of motion for web and email advertising without the significant bandwidth costs of full video, a notable advantage when high-speed internet was less common. (’587 Patent, col. 2:6-14).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and dependent claims 3-6. (Compl. ¶42).
- Independent Claim 1 requires:
- A method for providing animation in an electronic message, comprising:
- capturing a first image of a scene and a plurality of sequential images;
- defining a sensitivity level;
- identifying portions of the sequential images that differ from the first image corresponding to the sensitivity level;
- cutting the identified portions to produce cut images;
- superimposing the cut images onto the first image as layers, with each layer displayed in a position and time sequence corresponding to the original capture; and
- saving the first image and layers as a single web-enabled graphic image file.
- The complaint does not explicitly reserve the right to assert other claims but infringement allegations are currently limited to claims 1, 3, 4, 5, and 6.
U.S. Patent No. 7,629,977 - “Embedding Animation in Electronic Mail and Websites”
- Patent Identification: U.S. Patent No. 7,629,977, "Embedding Animation in Electronic Mail and Websites," issued December 8, 2009.
- The Invention Explained:
- Problem Addressed: The patent addresses the same problem as its parent ’587 patent: the need for an efficient method to transmit dynamic images over bandwidth-constrained connections like early web and wireless networks. (’977 Patent, col. 2:2-9).
- The Patented Solution: The invention describes a similar method of capturing multiple images from a fixed location, designating a first image as the static background, identifying a "particular feature" that is moving in subsequent images, cutting out that feature, and superimposing these cut-outs as layers onto the first image. This composite is saved as a single file that can be displayed to create an animated effect. (’977 Patent, Abstract; Fig. 5).
- Technical Importance: As part of the same patent family, this invention represents a continuation of the effort to create lightweight, engaging animations for online media before the widespread availability of high-speed streaming video. (’977 Patent, col. 2:2-14).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and dependent claims 2-6 and 8. (Compl. ¶58).
- Independent Claim 1 requires:
- A method for providing an animation, comprising:
- capturing from a fixed location a plurality of sequential images;
- designating a first image;
- identifying a particular feature shared by the sequential images but not the first image;
- cutting the particular feature from each sequential image to produce cut images;
- superimposing the cut images onto the first image as layers; and
- saving the first image and layers as a web-enabled graphic file.
- The complaint does not explicitly reserve the right to assert other claims.
Multi-Patent Capsule: U.S. Patent No. 8,035,644 - “Method for Embedding Animation in Electronic Mail and Websites”
- Patent Identification: U.S. Patent No. 8,035,644, "Method for Embedding Animation in Electronic Mail and Websites," issued October 11, 2011.
- Technology Synopsis: Continuing the same inventive theme, the ’644 patent claims a method for creating an animation by capturing sequential images, using a defined sensitivity level to identify differing portions, cutting those portions, and layering them onto a first image. The patent also claims the resulting electronic message containing the animation. (’644 Patent, Abstract).
- Asserted Claims: The complaint asserts independent claims 1 and 8, and various dependent claims. (Compl. ¶¶ 76, 84).
- Accused Features: Adobe's hosting of cinemagraphs on its website and in electronic communications, and its provision of software tools that allegedly instruct users to perform the claimed methods. (Compl. ¶¶ 68, 76).
Multi-Patent Capsule: U.S. Patent No. 11,232,768 - “Embedding Animation in Electronic Mail, Text Messages and Websites”
- Patent Identification: U.S. Patent No. 11,232,768, "Embedding Animation in Electronic Mail, Text Messages and Websites," issued January 25, 2022.
- Technology Synopsis: The ’768 patent claims a method where sequential images are captured, and a "user selected element" in motion is identified by comparing subsequent images to a first "key photo." Blocks of pixels capturing this motion are cut and inserted as layers into the key photo, which is saved as a single web-enabled graphic file. (’768 Patent, Abstract).
- Asserted Claims: The complaint asserts independent claims 1, 8, and 15, and various dependent claims. (Compl. ¶100).
- Accused Features: The "Accused Methods" for creating cinemagraphs using Adobe's software, which allegedly practice the patented steps of selecting, isolating, and layering moving elements. (Compl. ¶¶ 94, 102).
Multi-Patent Capsule: U.S. Patent No. 11,263,998 - “Embedding Animation in Electronic Mail, Text Messages and Websites”
- Patent Identification: U.S. Patent No. 11,263,998, "Embedding Animation in Electronic Mail, Text Messages and Websites," issued March 1, 2022.
- Technology Synopsis: The ’998 patent claims both the method of creating the animation and the resulting graphic file itself. The method involves identifying portions of sequential images that differ from a first image due to a user-selected element's motion, cutting those portions, and pasting them as layers into the first image. (’998 Patent, Abstract).
- Asserted Claims: The complaint asserts independent claims 1, 8, and 15, and various dependent claims. (Compl. ¶¶ 117, 126).
- Accused Features: Both the "Accused Product" (the cinemagraph files themselves) and the "Accused Method" (the software tools used for their creation). (Compl. ¶110).
III. The Accused Instrumentality
Product Identification
The complaint identifies two categories of accused instrumentalities: the "Accused Products" and the "Accused Methods." The Accused Products are the "Cinemagraphs" that Adobe markets and sells, for example through its Adobe Stock service. The Accused Methods are the processes for creating these cinemagraphs using Adobe's software, including Adobe Premiere Pro and Adobe After Effects. (Compl. ¶¶ 16-17, 20-22).
Functionality and Market Context
The complaint alleges that Adobe provides software and instructional materials (e.g., YouTube tutorials) that guide users through a step-by-step process of turning a video into a "subtly animated looping photograph." (Compl. ¶¶ 18, 21, 24). This process involves selecting a static frame from a video clip, masking or isolating a moving element within the clip, and layering the animated element over the static frame to create the final looping animation. A screenshot in the complaint shows a Google search result for an Adobe tutorial titled "How to make a cinemagraph | Adobe Premiere Pro tutorials." (Compl. ¶18). The complaint further alleges these cinemagraphs are sold in high volume, referencing a screenshot from Adobe's website showing "15,274 results for cinemagraphs in all." (Compl. ¶19).
IV. Analysis of Infringement Allegations
'587 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| capturing a first image... and a plurality of images in a sequential order | Adobe’s tutorials instruct users to begin with a video clip, which is inherently a plurality of images captured in a sequential order, from which a first static image (frame) is selected. | ¶21 | col. 2:24-29 |
| defining a sensitivity level | The complaint does not provide sufficient detail for analysis of this element, though it may be Plaintiff's position that user-controlled parameters in the software's masking or selection tools meet this limitation. | ¶24 | col. 2:37-39 |
| identifying portions of the sequential images that differ from the first image | Adobe's methods allegedly instruct users to manually select and isolate the specific area of the video they wish to animate, thereby identifying the portion that differs (i.e., moves) relative to the static frame. | ¶24 | col. 2:30-33 |
| cutting the identified portions... to produce cut images | The process of masking and isolating the selected moving element in Adobe's software is alleged to be equivalent to "cutting" the portion to create a separate animated layer. | ¶24 | col. 2:30-33 |
| superimposing, the cut images onto the first image as layers | Adobe's tutorials allegedly teach users to place the isolated animated selection as a layer on top of the chosen static background frame. | ¶21 | col. 2:40-42 |
| saving the first image and the layers as a single web-enabled graphic image file | The final step in the accused methods is to export the project as a single animated file, such as an animated GIF, which is a web-enabled format. | ¶21 | col. 2:42-44 |
'977 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| capturing from a fixed location a plurality of sequential images | The accused methods start with a video clip, which is a plurality of sequential images. Tutorials often recommend a tripod to ensure a "fixed location" for a clean effect. | ¶21 | col. 2:54-56 |
| designating a first image of the plurality of sequential images | Users of the accused methods are instructed to select a single, static frame from the video clip to serve as the background of the cinemagraph. | ¶21 | col. 2:58-59 |
| identifying a particular feature shared by the plurality of sequential images other than the first image | The accused methods allegedly teach users to identify and select a specific moving object or area (the "particular feature") to animate. | ¶24 | col. 2:60-63 |
| cutting the particular feature from each of the... sequential images to produce cut images | The process of creating a mask around the selected moving object in Adobe's software is alleged to constitute "cutting" that feature. | ¶24 | col. 2:64-65 |
| superimposing... the cut images onto the first image as layers | The masked, animated feature is layered on top of the static background frame to create the composite cinemagraph effect. | ¶21 | col. 3:9-12 |
| saving... the first image and the layers as a web-enabled graphic file | The process concludes with exporting the final layered composition into a single, web-enabled file format like an animated GIF. | ¶21 | col. 3:12-14 |
Identified Points of Contention
- Scope Questions: A primary question will be whether the manual, artistic process of a user selecting and masking a region in a general-purpose video editor like Adobe Premiere Pro can be construed to meet the more specific, arguably more automated, method steps of the patents, such as "defining a sensitivity level". The patents describe a technical process for creating a file, whereas the accused methods involve a user employing a creative toolset.
- Technical Questions: What evidence does the complaint provide that the accused software performs a "cutting" operation as required by the claims? The court may need to determine if a non-destructive digital mask is equivalent to "cutting" a portion of an image, especially as the patent figures illustrate the "cut" portion leaving an empty space in the source frame (’768 Patent, Fig. 3), a result that may not occur in the accused methods.
V. Key Claim Terms for Construction
For the ’587 Patent
- The Term: "defining a sensitivity level"
- Context and Importance: This term appears central to the infringement analysis, as it is not immediately clear how a user's manual selection of an object in Adobe's software equates to "defining a sensitivity level." Practitioners may focus on this term because its construction could determine whether a highly user-driven, creative process falls within the scope of a claim that suggests a more programmatic, parameter-based operation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that "depending upon a defined sensitivity level, other moving portions of the photos are edited," which could be argued to broadly cover any user-defined threshold or selection criteria that dictates what is included in the final animation. (’587 Patent, col. 2:37-39).
- Evidence for a Narrower Interpretation: The term itself, "sensitivity level", suggests a quantitative parameter used in a computational comparison between frames to automatically detect differences, rather than a user's qualitative, manual masking of a desired object. The patent family discusses comparing images to "note changes," which supports a more computational interpretation. (’768 Patent, Fig. 7, block 366).
For the ’977 Patent
- The Term: "cutting the particular feature"
- Context and Importance: The infringement case hinges on whether the "masking" function in Adobe's software meets the "cutting" limitation. Defendant may argue that digital masking is a non-destructive layering technique, distinct from the physical-sounding process of "cutting."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that in the context of digital image manipulation, "cutting" is commonly understood to mean isolating a set of pixels for separate handling, which is functionally what masking achieves. The patent's goal is to separate the moving element for layering, a goal achieved by masking. (’977 Patent, col. 2:60-65).
- Evidence for a Narrower Interpretation: The patent family's figures (e.g., Figure 3 in the ’768 Patent) depict the "cut" operation leaving an empty void in the subsequent frames. This visual evidence may support a narrower definition where "cutting" implies removal from the source, a step that may not occur in the non-destructive workflow of the accused methods.
VI. Other Allegations
- Indirect Infringement: The complaint makes detailed allegations of induced infringement. It claims Adobe specifically instructs and encourages its customers to perform the patented methods by publishing and promoting detailed, step-by-step tutorials on its website and on platforms like YouTube that demonstrate how to create cinemagraphs using Adobe Premiere Pro and After Effects. (Compl. ¶¶ 20-24, 44, 60, 86, 102, 128).
- Willful Infringement: The complaint alleges that Adobe's infringement has been willful. This allegation is based on both alleged pre-suit and post-suit knowledge. The complaint asserts pre-suit knowledge by pointing to an August 7, 2018, office action from the USPTO that cited the ’587 patent against one of Adobe's own patent applications. Given that all patents-in-suit belong to the same family, Plaintiff argues this event put Adobe on notice of the entire portfolio. (Compl. ¶¶ 43, 59, 74).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can claim terms rooted in the patent's specific technical recipe, such as "defining a sensitivity level" and "cutting", be construed broadly enough to read on the user-driven, manual functions of a general-purpose creative software suite like Adobe Premiere Pro? The outcome may depend on whether the court views these terms as requiring a specific technical implementation or as more general descriptions of function.
- A key infringement question will be one of causation and intent: for the indirect infringement claims, the court will have to determine whether Adobe's tutorials and marketing materials for creating cinemagraphs specifically instruct users to perform all steps of the patented methods, and whether Adobe did so with the knowledge and intent that its users would infringe. The complaint's allegation of prior notice via a USPTO citation will be a significant fact in this analysis.