DCT
2:23-cv-00277
J&H Web Tech LLC v. Microsoft Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: J&H Web Technologies, LLC (Texas)
- Defendant: Microsoft Corporation (Delaware)
- Plaintiff’s Counsel: Garteiser Honea, PLLC
- Case Identification: 2:23-cv-00277, E.D. Tex., 06/21/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Microsoft maintains "regular and established physical places of business" in the district through its contractual relationships with Authorized Service Providers, such as DXC Technology and TD Synnex, which have physical facilities in the district and over which Microsoft allegedly exerts control.
- Core Dispute: Plaintiff alleges that Defendant’s Microsoft Outlook Online email service infringes a patent related to methods for automatically detecting and managing email subscriptions.
- Technical Context: The technology addresses the management of high-volume commercial email by automatically analyzing messages to identify and present users with simplified options for unsubscribing from mailing lists.
- Key Procedural History: The complaint details extensive pre-suit history, alleging that Plaintiff disclosed its "patent pending" technology to Acompli, Inc. under a non-disclosure agreement in July 2014. Microsoft acquired Acompli in December 2014, and Plaintiff alleges it provided notice of the issued patent to the acquired entity in January 2015. These allegations form the basis for the willfulness claim.
Case Timeline
| Date | Event |
|---|---|
| 2012-03-09 | '342 Patent Priority Date |
| 2014-07-07 | Plaintiff and Acompli, Inc. enter into a mutual NDA |
| 2014-07-15 | Plaintiff provides Acompli with its "patent pending" technology for evaluation |
| 2014-10-27 | Acompli informs Plaintiff it is not interested in the technology |
| 2014-12-01 | Microsoft announces its acquisition of Acompli |
| 2015-01-13 | U.S. Patent No. 8,935,342 Issues |
| 2015-01-22 | Plaintiff informs Acompli (post-acquisition) that the patent has issued |
| 2023-06-21 | First Amended Complaint for Patent Infringement filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,935,342 - "Method for Detecting and Unsubscribing an Address from a Series of Subscriptions," Issued Jan. 13, 2015
The Invention Explained
- Problem Addressed: The patent identifies the difficulty users face in managing a high volume of email subscriptions, which often use inconsistent and confusing methods for opting out. (Compl. ¶23; ’342 Patent, col. 2:1-9). It notes that simply marking such emails as spam is a poor solution, as it can inadvertently block desirable transactional emails (e.g., purchase receipts) from the same sender. (Compl. ¶24; ’342 Patent, col. 2:10-18).
- The Patented Solution: The invention describes a system that automates the process of "cleaning" an inbox by first accessing a user's mailbox and processing messages to identify those originating from subscription lists. (’342 Patent, Abstract). This is achieved by examining email headers (such as the "List-Unsubscribe" header) and body content for patterns, keywords, and links indicative of a subscription, thereby identifying the correct unsubscribe method for each. (’342 Patent, col. 6:48-51; Fig. 2). The system can then execute the unsubscription automatically or present the identified subscriptions to the user for manual action.
- Technical Importance: The patented method provides a more intelligent approach than conventional spam filters by specifically targeting the management of legitimate, but unwanted, subscription-based emails. (’342 Patent, col. 1:52-55).
Key Claims at a Glance
- The complaint asserts at least independent claim 1. (Compl. ¶31).
- The essential elements of independent claim 1 include:
- A method comprising identifying and accessing one or more email accounts/mailboxes.
- Processing email messages to identify those originating with a subscription list.
- Processing at least one message to identify methods of unsubscribing, which includes either:
- identifying list-unsubscribe headers in a message header; or
- identifying unsubscribe methods within the message body.
- Wherein identifying methods in the body further comprises collecting unsubscribe hyperlinks and identifying them as potential unsubscription methods.
- Presenting the previously identified subscriptions to the user.
- Unsubscribing from at least one subscription in response to a user request.
- The complaint reserves the right to assert additional claims. (Compl. ¶31).
III. The Accused Instrumentality
Product Identification
- Microsoft Outlook Online. (Compl. ¶30).
Functionality and Market Context
- The complaint alleges that Microsoft Outlook Online provides features that analyze incoming emails to identify subscription messages. (Compl. ¶32). When such a message is identified, Outlook Online allegedly presents a simplified interface element, such as a prominent "Unsubscribe" link, to the user. This functionality is alleged to rely on parsing both email headers for "list-unsubscribe" information and email bodies for unsubscribe hyperlinks. (Compl. ¶¶ 32-33). One screenshot provided in the complaint shows an email within the Outlook Online interface where the text "Getting too much email? Unsubscribe | Manage subscriptions" is displayed above the sender information, separate from the original email content. (Compl. p. 10). The complaint does not provide detail on the product's specific market positioning beyond its association with Microsoft.
IV. Analysis of Infringement Allegations
’342 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| processing, at least a subset of the email messages in the mailboxes to identify those originating with a subscription list; | Outlook Online allegedly processes emails to find unsubscribe information, thereby identifying them as subscription messages. | ¶32 | col. 6:48-51 |
| wherein identifying methods of unsubscribing from the subscriptions further comprises: identifying list-unsubscribe headers in a message header; | The complaint provides a screenshot of an email's "Message source" within Outlook Online, highlighting the presence of a "list-unsubscribe" field in the header. | ¶33, p. 11 | col. 7:42-45 |
| or identifying unsubscribe methods within the message body; | Outlook Online is alleged to identify unsubscribe methods located within the body of an email message. A provided screenshot shows the source code of an email containing an "Unsubscribe here" hyperlink. | ¶32, p. 12 | col. 8:1-4 |
| wherein identifying unsubscribe methods within the message body further comprises: collecting unsubscribe hyperlinks from the message body; and identifying those hyperlinks as potential unsubscription methods | Outlook Online allegedly collects hyperlinks from the message body and identifies them as ways to unsubscribe, which is the basis for its added "Unsubscribe" feature. | ¶32 | col. 8:18-29 |
| presenting to the user the subscriptions previously identified; | Outlook Online allegedly presents the option to unsubscribe via a link displayed prominently at the top of an identified subscription email. One visual shows this feature in action for an email from "StretchLab." | ¶33, p. 10 | col. 7:4-6 |
| and unsubscribing from, at least a single subscription in response to a user requests; | The user can allegedly initiate the unsubscribe process by clicking the link presented by Outlook Online. | ¶29, ¶32 | col. 7:15-19 |
Identified Points of Contention
- Scope Questions: A question exists as to whether Outlook Online's feature of adding an "Unsubscribe" link to individual emails meets the claim limitation of "presenting to the user the subscriptions previously identified." The patent specification discusses presenting a "list of all subscriptions" to the user, which may suggest a more aggregated presentation is required by the claims. (col. 7:4-6).
- Technical Questions: The complaint alleges that Outlook Online performs the claimed processing but provides limited evidence on the underlying mechanism. A key question is whether the accused product performs the full, multi-step analysis described in the patent's preferred embodiments (e.g., comparing messages for duplicate senders, checking against blacklists) or if it employs a simpler method of merely parsing for a "list-unsubscribe" header and common hyperlink text like "unsubscribe."
V. Key Claim Terms for Construction
"processing . . . to identify those originating with a subscription list"
- Context and Importance: This term defines the core detection step of the invention. Its construction is critical because the infringement analysis depends on whether Microsoft's method of finding an unsubscribe link or header qualifies as the claimed "processing."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a particular method of processing, which may support an interpretation that any automated analysis that successfully identifies a subscription email falls within the claim scope.
- Evidence for a Narrower Interpretation: The detailed description and figures describe a more complex process involving multiple checks, such as identifying duplicate senders (Fig. 2, 203), checking if the email was a "CC" or "BCC" (Fig. 2, 204), and checking sender IPs against a blacklist (Fig. 2, 206). A party could argue these specific steps inform the meaning of "processing."
"presenting to the user the subscriptions previously identified"
- Context and Importance: This term is central to the user-facing aspect of the invention. The dispute may turn on whether displaying an unsubscribe option within a single email constitutes "presenting the subscriptions."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that presenting the user with a clear option to act on an identified subscription, even one at a time, fulfills the purpose and language of this claim element.
- Evidence for a Narrower Interpretation: The specification explicitly states that "the system presents to the user a list of all subscriptions identified for each email account." (’342 Patent, col. 7:4-6). This language, along with Figure 1 (130, "Present User with list of findings"), may support an interpretation requiring a consolidated list of multiple subscriptions, not just a link within a single email.
VI. Other Allegations
Indirect Infringement
- The complaint alleges that Microsoft induces infringement by creating and distributing materials such as "tutorials, brochures, manuals, [and] instructional documents" that instruct users on how to use the infringing features of Outlook Online. (Compl. ¶37).
Willful Infringement
- The complaint alleges willful infringement based on Microsoft’s alleged knowledge of the technology and patent. The allegations center on Microsoft’s 2014 acquisition of Acompli, Inc. The complaint asserts that prior to the acquisition, Plaintiff had an NDA with Acompli, shared its "Patent Pending" technology, and was later rejected. (Compl. ¶¶ 39-41). After the acquisition, Plaintiff allegedly provided Acompli with notice of the issued ’342 patent number. (Compl. ¶43). Plaintiff also alleges notice based on the filing of the original complaint. (Compl. ¶44).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the term "processing... to identify... a subscription list," as defined in the patent, be construed to cover Microsoft's alleged functionality, or does the patent’s detailed description of a multi-step analytical process limit the claim to a more complex method than what Outlook Online performs?
- A key evidentiary question will be one of infringement and functionality: does presenting a single "Unsubscribe" link within an individual email meet the claim requirement of "presenting to the user the subscriptions previously identified," particularly when the specification explicitly describes presenting a "list" of subscriptions?
- A central factual dispute will surround pre-suit knowledge for willfulness: can the alleged pre-acquisition knowledge of Acompli, Inc. regarding Plaintiff's "patent pending" technology, combined with alleged post-acquisition notice of the issued patent, be imputed to Microsoft to establish the knowledge and intent required for willful infringement?