DCT
2:24-cv-00774
Vieri v. Intuit Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Riccardo Vieri (Individual)
- Defendant: Intuit Inc. (Texas)
- Plaintiff’s Counsel: Garteiser Honea, PLLC
- Case Identification: 2:24-cv-00774, E.D. Tex., 09/23/2024
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established physical place of business in the district and has committed acts of patent infringement there.
- Core Dispute: Plaintiff alleges that Defendant’s Intuit Mailchimp service, specifically its SMS marketing and automation platform, infringes a patent related to contextual advertising.
- Technical Context: The technology relates to systems for delivering targeted advertisements within a messaging framework, a key method for monetizing digital communications.
- Key Procedural History: The complaint notes that the patent-in-suit has been cited by other technology companies in their own patent applications. No prior litigation, licensing history, or post-grant proceedings are mentioned.
Case Timeline
| Date | Event |
|---|---|
| 2008-01-22 | '005 Patent - Earliest Priority Date (Italian Application) |
| 2012-04-10 | '005 Patent - Issue Date |
| 2024-09-23 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,156,005 - "Systems and Methods of Contextual Advertising"
Issued April 10, 2012
The Invention Explained
- Problem Addressed: The patent addresses the declining performance of traditional banner and email advertising and the corresponding rise of interest in more innovative, performance-based advertising methods. It also notes the increasing prevalence of Short Message Service (SMS) as a communication method (Compl. ¶10; ’005 Patent, col. 1:15-31).
- The Patented Solution: The invention describes a system that intercepts a message (e.g., an SMS) sent from a “sender” to a “recipient.” The system analyzes characteristics of the sender, the recipient, and the message content to select a targeted advertisement. This advertisement is then delivered back to the original sender, while the original message is forwarded to its intended recipient. The system essentially monetizes a communication exchange by serving a contextually relevant ad to the person initiating the communication (’005 Patent, Abstract; Fig. 1).
- Technical Importance: The technology proposes a method to monetize peer-to-peer or application-to-person messaging by inserting a targeted advertisement into the communication flow, directed at the message originator rather than the recipient (’005 Patent, col. 2:2-14).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (’005 Patent, col. 11:55-12:28).
- Independent Claim 1 requires, in essence:
- A processor and modules for receiving, selecting, and delivering messages and advertisements.
- Receiving SMS message data from a sender via a user interface on a particular website.
- An advertisement selection module that:
- Identifies campaign data based on characteristics of the sender, recipient, and/or message.
- Determines if the sender is a "frequent message sender" based on a threshold.
- Determines if the sender is a "frequent visitor" to the website based on a threshold.
- Selects an advertisement based on the campaign data, the sender's frequency classifications, and the message content.
- Adds the sender to an "autoresponder cycle" for a sequence of future ads.
- A module to send the original SMS message to the recipient.
- A module to send the selected advertisement to the sender.
III. The Accused Instrumentality
Product Identification
The accused instrumentality is the Intuit Mailchimp service, specifically its SMS marketing and automation platform (Compl. ¶26).
Functionality and Market Context
The complaint describes the accused product as an "email marketing and automations platform" that allows businesses to "unify [their] marketing under one roof by seamlessly integrating SMS into [their] email, automations, and social campaigns" (Compl. ¶26, Fig. 1). The functionality allows businesses (the "sender") to send automated and personalized SMS messages to their customers (the "recipient"). These messages can be triggered by customer behavior, such as purchases or website activity, or scheduled for events like birthdays (Compl. ¶26; Fig. 2). The platform is a business-to-consumer (B2C) marketing tool. An included visual depicts a multi-step automation workflow, such as a sequence for abandoned shopping carts (Compl. ¶26, Fig. 1).
IV. Analysis of Infringement Allegations
'005 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a message receiving module to receive short messaging service (SMS) message data, wherein the SMS message data is received from a sender via a user interface associated with a particular website... | The Intuit Mailchimp platform allows a user (the sender) to create and send SMS marketing messages via its service. | ¶26 | col. 3:3-11 |
| an advertisement selection module executable by the processor to: identify data associated with an advertisement campaign, wherein the data includes at least one of a characteristic of the recipient, a characteristic of the sender, and a characteristic of the SMS message data; | The platform allegedly uses customer data ("personalized messages that include customers' names or information about their purchasing habits"), birthday data, and triggers ("specific keywords, searches, recent purchases and other consumer-triggered events") to generate and send messages. A screenshot from Defendant's website is provided to support this allegation (Compl. Fig. 2). | ¶26, Fig. 2 | col. 4:2-6; 4:35-43 |
| ...determine whether the sender is classified as a frequent message sender...; determine whether the sender is classified as a frequent visitor to the particular website... | The complaint does not provide sufficient detail for analysis of these elements. | N/A | col. 4:65-5:21; 5:28-54 |
| ...select an advertisement based on the identified data, based on whether the sender is classified as a frequent message sender, based on whether the sender is classified as a frequent visitor to the particular website, and based on at least a portion of the SMS message data; | The platform selects personalized marketing messages, such as "Personalized Sales" or "Birthday Wishes," based on specific triggers and customer data. | ¶26, Fig. 2 | col. 4:44-50 |
| ...add the sender to an autoresponder cycle, wherein the autoresponder cycle results in presentation of a sequence of other advertisements to the sender... | The complaint provides a visual depicting a multi-step, automated marketing campaign, which it characterizes as an autoresponder cycle. This visual shows a sequence of events and communications, including sending a follow-up SMS (Compl. Fig. 1). | ¶26, Fig. 1 | col. 7:47-65 |
| a message delivery module to send an SMS message to the recipient... | The platform's core function is sending SMS messages to a business's customers. | ¶26 | col. 3:6-8 |
| an advertisement delivery module to send the selected advertisement to the sender. | The complaint alleges that the platform includes "an advertisement delivery module to send the selected advertisement to the sender," and supports this by referencing the system's ability to send automated and targeted SMS messages to customers. The complaint does not distinguish between the message sent to the recipient and the advertisement sent to the sender (Compl. p. 7, Fig. 2). | p. 7, Fig. 2 | col. 3:8-10 |
Identified Points of Contention
- Architectural Questions: The patent claims require sending an advertisement to the sender of the original message. The accused Mailchimp product is a B2C platform where a business (the sender) sends marketing messages to its customer (the recipient). The complaint's allegations raise the fundamental question of whether the accused product sends an advertisement back to the business that is using the Mailchimp service, as a plain reading of the claim language would seem to require.
- Evidentiary Questions: The complaint does not allege specific facts showing how the accused system determines if a sender is a "frequent message sender" or a "frequent visitor" to the website, both of which are required steps in the asserted claim's logic for selecting an advertisement.
V. Key Claim Terms for Construction
The Term: "sender"
- Context and Importance: The identity of the "sender" is central to the dispute. The patent specification describes a general messaging architecture where a "sender" communicates with a "recipient" (’005 Patent, Fig. 1). The infringement theory appears to cast the business using Mailchimp as the "sender". The construction of this term will be critical because Claim 1 requires that the selected advertisement is ultimately delivered to the sender.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent describes the system in general terms of a "sender 108" and "recipient 110", without explicitly limiting them to non-commercial individuals, which could support an interpretation that includes a business entity (’005 Patent, col. 3:3-5).
- Evidence for a Narrower Interpretation: The overall context of monetizing general SMS traffic, including via a web interface, may suggest that the patent envisioned a peer-to-peer or consumer-to-business context, where the individual initiating a message receives an ad, not a business using a dedicated marketing platform.
The Term: "send the selected advertisement to the sender"
- Context and Importance: This phrase is the lynchpin of the infringement analysis. Practitioners may focus on this term because the claim separately recites sending the "SMS message to the recipient" and sending the "selected advertisement to the sender". This suggests two distinct delivery actions to two different parties. The plaintiff’s theory appears to conflate the advertisement with the message sent to the ultimate customer.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that in a B2C context, the "advertisement" is the marketing message itself, and that "sending" it "to the sender" could be interpreted non-literally, for instance, as making it available for review in the sender's (the business's) campaign dashboard.
- Evidence for a Narrower Interpretation: The plain language and structure of Claim 1, which lists the "message delivery module" and the "advertisement delivery module" as separate components performing distinct actions (’005 Patent, col. 12:22-28), strongly supports an interpretation that the advertisement is a separate payload delivered back to the message originator, not the message delivered to the final recipient.
VI. Other Allegations
Indirect Infringement
The complaint alleges that Defendant induces and contributes to infringement "at least from the service of this lawsuit" (Compl. ¶27). This allegation appears to be based on a theory of post-suit knowledge and does not plead specific facts related to pre-suit intent or affirmative acts to encourage infringement by others beyond providing the platform itself.
Willful Infringement
The complaint does not contain allegations to support a claim for willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of architectural mismatch: can the accused Mailchimp platform, which sends marketing messages from a business to a customer, be found to practice a claim that explicitly requires a module "to send the selected advertisement to the sender"? The resolution may depend on whether the marketing message sent to the customer can be considered the "advertisement" and whether that act satisfies the claim's requirement of delivery "to the sender."
- A second key issue will be one of evidentiary proof: can the Plaintiff provide evidence that the accused system performs the specific, multi-part logical functions required by Claim 1, particularly the steps of classifying the sender (the business) as a "frequent message sender" and "frequent visitor" as part of its advertisement selection process? The complaint currently lacks factual allegations on these limitations.