ContactWave LLC v. Macy's Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ContactWave LLC (New Mexico)
  • Defendant: Macy's Inc. (Delaware)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 2:24-cv-00989, E.D. Tex., 03/19/2025
• Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant maintains an established place of business in the district and has allegedly committed acts of patent infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s customer messaging and marketing systems infringe a patent related to a server-based method for sending messages from different vendors to mobile users based on prior user consent.
• Technical Context: The technology concerns systems for managing commercial communications between businesses and mobile device users, specifically creating permission-based marketing channels.
• Key Procedural History: The complaint notes that it is a "First Amended Complaint" and that an original complaint was filed on December 2, 2024. The filing of the original complaint is cited as the basis for Defendant's actual knowledge of infringement.

Case Timeline

Date	Event
2005-11-17	’665 Patent - Earliest Priority Date
2015-02-10	’665 Patent - Application Filing Date
2016-12-27	’665 Patent - Issue Date
2024-12-02	Original Complaint Filing Date
2025-03-19	First Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,531,665 - “Information messaging system,”

• Patent Identification: U.S. Patent No. 9,531,665, “Information messaging system,” issued December 27, 2016.

The Invention Explained

• Problem Addressed: The patent asserts that prior to the invention, business contact information on web pages lacked a standard format, requiring users to manually transcribe information into their mobile devices, a "tedious and cumbersome process" (Compl. ¶¶10-11; ’665 Patent, col. 4:2-8). This lack of standardization and integration prevented the establishment of efficient, permission-based communication channels between businesses and mobile users (Compl. ¶17).
• The Patented Solution: The invention describes a server-based method that allows vendors to send messages to mobile users. In a key embodiment, the system creates a cross-vendor messaging architecture where a user's acceptance of a message from a "first vendor" is verified by a server, which then permits a "second vendor" to send a message to that same user (Compl. ¶15; ’665 Patent, Fig. 9B). This creates a technological ecosystem where, for example, one pizza store could send an offer to mobile users who had previously accepted an offer from a different pizza store (Compl. ¶18; ’665 Patent, col. 12:13-24).
• Technical Importance: The claimed method purports to create a technically-efficient, consent-based targeting mechanism that reduces unnecessary message processing and allows businesses to send targeted campaigns to users who have already demonstrated interest (Compl. ¶16).

Key Claims at a Glance

• The complaint asserts infringement of at least exemplary claim 1 of the ’665 Patent (Compl. ¶22).
• Independent Claim 1 of the ’665 Patent recites a server-performed method with the following essential elements:
  • The server has access to mobile user accounts and vendor accounts, with a "first vendor" and a "second vendor" account.
  • Sending a first message from the first vendor to a first mobile user.
  • Receiving acceptance information from the first mobile user indicating acceptance of the first vendor's message.
  • Verifying, by the server, that the first mobile user has accepted the first vendor's message.
  • Sending a message from the second vendor to the first mobile user only after the verification step.
• The complaint does not specify if dependent claims are asserted but incorporates charts by reference that may identify them (Compl. ¶22).

III. The Accused Instrumentality

Product Identification

The complaint does not name a specific Macy's Inc. product, service, or system. It refers generally to "Exemplary Defendant Products" that are identified in claim charts provided as Exhibit 2 to the complaint (Compl. ¶22). This exhibit was not included with the filed complaint document.

Functionality and Market Context

The complaint alleges that Defendant makes, uses, sells, and/or imports products and has its employees internally test and use products that practice the technology claimed by the ’665 Patent (Compl. ¶¶22-23). The infringement theory is based on systems that allegedly implement a multi-step, consent-based verification protocol for delivering commercial messages to users (Compl. ¶15). No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references claim charts in an external "Exhibit 2" to detail its infringement allegations but does not include this exhibit in the body of the filing (Compl. ¶¶27-28). The complaint’s narrative theory is that Defendant’s systems practice the method of claim 1 by implementing a "multi-step verification protocol that conditions message delivery on verified acceptance of related messages" (Compl. ¶15). The core of the allegation is that Defendant’s systems use a verification architecture that creates a filtering mechanism, preventing system overload and enabling targeted commercial communications based on prior user consent (Compl. ¶15). This allegedly solves the cross-vendor messaging problems described in the patent (Compl. ¶18).

• Identified Points of Contention:
  • Scope Questions: A central question will be whether the terms "first vendor" and "second vendor" as used in the patent can read on the accused system. For example, if the accused system involves only the Defendant (Macy's) and its customers, a dispute may arise as to whether different brands, departments, or marketing campaigns operated by a single corporate entity can be construed as distinct "vendors" as required by the claim. The patent's example of "Pete's Pizza Store" and "John's Pizza Store" may support an interpretation requiring two separate commercial entities (’665 Patent, col. 12:13-24).
  • Technical Questions: The complaint alleges a specific sequence of operations: sending a first message, receiving acceptance, verifying acceptance, and only then sending a second message from a different source (Compl. ¶15). A key evidentiary question will be whether the accused system performs this precise sequence. The analysis will require evidence of the server-side logic that governs message delivery and whether it truly conditions a message from a "second vendor" on a verified acceptance of a message from a "first vendor."

V. Key Claim Terms for Construction

• The Term: "second vendor"
• Context and Importance: The identity and relationship between the "first vendor" and "second vendor" are at the heart of Claim 1. The infringement case appears to depend on whether the accused system involves two distinct "vendors" interacting in the claimed manner. Practitioners may focus on this term because if "vendor" is construed to mean separate corporate entities, it could present a significant hurdle for the infringement allegation against a single defendant like Macy's.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims do not explicitly define "vendor" or require the vendors to be legally distinct entities. A party could argue that any partitioned source of messages within a server architecture, such as different brands or marketing partners managed by the server, could qualify as a distinct "vendor." The patent refers broadly to "vendors" creating "vendor accounts" on the server application ('665 Patent, col. 11:36-39).
  • Evidence for a Narrower Interpretation: The specification provides an example where two competing businesses, "Pete's Pizza Store" and "John's Pizza Store," are the first and second vendors, respectively (’665 Patent, col. 12:13-24). Further, claim 4 recites that "the first and second vendors are competitors competing in one same industry." While not part of the asserted independent claim, this language may be used to argue that the patent contemplates vendors as separate, and potentially competing, commercial entities.

VI. Other Allegations

• Indirect Infringement: Plaintiff alleges induced infringement, stating that Defendant distributes "product literature and website materials inducing end users and others to use its products in the customary and intended manner that infringes the ’665 Patent" (Compl. ¶25). The complaint references Exhibit 2 as containing materials demonstrating how end users are directed to commit infringement (Compl. ¶25).
• Willful Infringement: The willfulness allegation is based on alleged post-suit knowledge. Plaintiff asserts that the service of the original complaint on December 2, 2024, provided Defendant with actual knowledge, and that Defendant’s continued alleged infringement since that date has been willful (Compl. ¶¶24-25).

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this case will likely depend on the answers to two primary questions:

1. A core issue will be one of definitional scope: How will the court construe the term "vendor," and specifically the relationship between the "first vendor" and the "second vendor"? The case may turn on whether two different brands or message sources managed by a single corporate defendant can satisfy the claim requirement for two distinct vendors, a point on which the patent's text and examples could support competing interpretations.

2. A key evidentiary question will be one of architectural proof: What evidence can be produced to show that the accused system's server architecture performs the specific, conditional logic of Claim 1? Plaintiff will need to demonstrate not just that users receive multiple marketing messages, but that a message from a "second vendor" is programmatically conditioned on, and sent "only after," the server verifies a user's acceptance of a message from a "first vendor."