ContactWave LLC v. Best Buy Co Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: ContactWave LLC (New Mexico)
  • Defendant: Best Buy Co., Inc. (Minnesota)
  • Plaintiff’s Counsel: Rabicoff Law LLC
• Case Identification: 2:24-cv-00991, E.D. Tex., 12/02/2024
• Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains an established place of business in the Eastern District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s unspecified products and services infringe a patent related to a server-based method for sending targeted messages from vendors to mobile device users.
• Technical Context: The technology addresses methods for managing and transmitting marketing or contact information from a vendor to a mobile user, specifically involving a sequence of messages based on the user's acceptance of a prior message.
• Key Procedural History: The asserted patent is subject to a terminal disclaimer, which may limit its enforceable term. The patent claims priority to an application filed in 2011 and is part of a larger family of related applications, suggesting a developed prosecution strategy. The complaint alleges only post-suit knowledge for its willfulness claim.

Case Timeline

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

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

Issued December 27, 2016

The Invention Explained

• Problem Addressed: The patent identifies the process of transferring contact information from a business's webpage to a user's mobile device as "cumbersome and time consuming," requiring manual printing, writing, or data entry (’665 Patent, col. 2:16-21).
• The Patented Solution: The invention describes a server-based system that automates this process. In one embodiment, the system sends a message from a first vendor to a mobile user; upon receiving "acceptance information" from that user, the server verifies the acceptance and then sends a message from a second vendor to that same user ('665 Patent, col. 13:36-54; FIG. 9B). This creates a method for sequential, acceptance-gated messaging, potentially between competing vendors, managed by a central server.
• Technical Importance: The described system provides a method for targeted, permission-based advertising on mobile devices, where a user's engagement with one vendor can trigger a marketing message from another.

Key Claims at a Glance

• The complaint asserts "one or more claims" without specifying them (Compl. ¶11). Independent claims 1 (method) and 7 (server) are the foundational claims of the patent.
• Independent Claim 1 (Method):
  • A method performed by a server for sending messages from vendors to mobile users.
  • The server has access to mobile user accounts and vendor accounts.
  • The vendor accounts include a first vendor and a second vendor.
  • Sending a first vendor message to a first mobile user.
  • Receiving "acceptance information" from the mobile user indicating acceptance of the first vendor message.
  • Verifying that the mobile user has accepted the first vendor message.
  • Sending a message from the second vendor to the mobile user only after the verification step.
• The complaint does not explicitly reserve the right to assert dependent claims but refers generally to "Exemplary '665 Patent Claims" (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The complaint does not specifically name any accused product, method, or service. It refers generically to "Exemplary Defendant Products" that are purportedly identified in an "Exhibit 2" (Compl. ¶¶11, 16). This exhibit was not filed with the complaint.

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused instrumentality's functionality or market context. It alleges in general terms that Defendant directly infringes by "making, using, offering to sell, selling and/or importing" the unidentified products (Compl. ¶11) and by having its employees "internally test and use these Exemplary Products" (Compl. ¶12).

IV. Analysis of Infringement Allegations

The complaint references but does not include "charts comparing the Exemplary '665 Patent Claims to the Exemplary Defendant Products" (Compl. ¶16). In the absence of these charts, the complaint's infringement theory is presented in narrative form.

The complaint alleges that the "Exemplary Defendant Products" practice the technology claimed by the ’665 Patent and that they "satisfy all elements of the Exemplary '665 Patent Claims" (Compl. ¶16). The infringement allegations cover direct infringement (Compl. ¶11), induced infringement (Compl. ¶15), and internal testing by Defendant's employees (Compl. ¶12). However, without identification of the accused products or the specific claim charts, the precise factual basis for how the accused products allegedly meet each claim element is not articulated in the complaint.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Question: A central issue may be whether the accused system involves a "first vendor" and a "second vendor" as required by the claim. The court may need to determine if a single retailer, such as Best Buy, sending multiple promotional messages for different brands (e.g., Samsung, then LG) can be considered both the "first vendor" and "second vendor," or if the claim requires two distinct corporate entities. Dependent claim 4, which specifies that the vendors are "competitors," may inform this analysis ('665 Patent, col. 14:4-5).
  • Technical Question: It may be disputed what specific user action constitutes "acceptance information indicating the first mobile user's acceptance" ('665 Patent, col. 13:42-43). The case could turn on whether a general action, like clicking a link or downloading an app, meets this limitation, or if a more explicit "opt-in" is required by the claim language.
  • Evidentiary Question: Plaintiff will need to present evidence that the accused system's logic performs the specific sequence of the claim: sending a second vendor's message only after verifying acceptance of the first. It raises the question of whether the accused system's marketing logic is merely correlated with user behavior or if it implements the precise conditional sequence recited in the claim.

V. Key Claim Terms for Construction

• The Term: "a first vendor" and "a second vendor" (Claim 1)

• Context and Importance: The structure of claim 1 requires two distinct vendors. The infringement analysis will depend heavily on whether a single retailer (Defendant) can be construed as acting as two different "vendors" or if the claim requires two separate commercial entities. Practitioners may focus on this term because if construed to require two separate entities, Plaintiff would need to show that Defendant’s system facilitates messaging from a third-party competitor.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent does not explicitly define "vendor." A party could argue that in its plain and ordinary meaning, a large retailer that sells products from many different manufacturers acts as a "vendor" for each of those brands distinctly in its marketing communications.
  • Evidence for a Narrower Interpretation: Dependent claim 4 recites "wherein the first and second vendors are competitors" ('665 Patent, col. 14:4-5). This language suggests that the patentee contemplated the vendors as being separate, competing entities, which could be used to argue for a narrower construction of the independent claim term.

• The Term: "acceptance information" (Claim 1)

• Context and Importance: The method is gated by the server's receipt and verification of this information. The viability of the infringement claim depends on identifying a corresponding feature in the accused product and showing it functions as the claimed "acceptance."

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term is not explicitly defined, which may support an argument that it should be given its plain meaning, potentially encompassing a wide range of user interactions such as clicking a link, viewing a message, or downloading related content.
  • Evidence for a Narrower Interpretation: The claim requires "acceptance information indicating the first mobile user's acceptance of the first vendor message" ('665 Patent, col. 13:42-44). A party could argue this requires more than an incidental interaction, but rather a specific, affirmative act by the user in response to the first message, signifying consent to that message's content or offer.

VI. Other Allegations

• Indirect Infringement: Plaintiff alleges induced infringement, stating that Defendant provides "product literature and website materials" that instruct and encourage end users to use the accused products in a manner that infringes the ’665 Patent (Compl. ¶14).
• Willful Infringement: The complaint bases its willfulness allegation on post-suit conduct. It asserts that the filing of the complaint provides Defendant with "actual knowledge" and that any continued infringement thereafter is willful (Compl. ¶¶13-14).

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

This dispute, as framed by the complaint, will likely focus on three central questions:

1. A threshold evidentiary issue will be Product Identification: The initial phase of litigation will require the identification of the specific Best Buy products or services accused of infringement, as this information is absent from the complaint.

2. A core issue will be one of Definitional Scope: Can the terms "first vendor" and "second vendor" be construed to cover a single retailer marketing products from different brands, or do they require two distinct, and potentially competing, commercial entities as suggested by the patent's own language?

3. A key technical question will be one of Functional Causality: Does the accused system's logic implement the specific conditional sequence of Claim 1—sending a second message only after verifying a user's "acceptance" of a first message—or does it operate as a more general targeted advertising platform where subsequent messages are not causally dependent on the acceptance of a prior one in the manner claimed?