J&H Web Tech LLC v. Return Path Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: J&H Web Technologies, LLC (Texas)
  • Defendant: Return Path, Inc. (Delaware)
  • Plaintiff’s Counsel: Brandt Law Firm
• Case Identification: 1:18-cv-00152, W.D. Tex., 02/21/2018
• Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the district, offers the accused products for sale there, and has a principal place of business in Austin, Texas.
• Core Dispute: Plaintiff alleges that Defendant’s Unsubscriber.com tool infringes a patent related to methods for automatically detecting and unsubscribing a user’s email address from multiple subscription lists.
• Technical Context: The technology addresses the common problem of email inbox clutter by automating the burdensome and technically varied process of unsubscribing from commercial and other bulk mailing lists.
• Key Procedural History: The complaint details the history of the inventor, Henal Patel, and the development of Plaintiff's own product, Unlistr, which is alleged to practice the patent-in-suit. The complaint notes Unlistr was launched in 2011 and has been downloaded approximately 103,000 times.

Case Timeline

Date	Event
2006-10-01	Plaintiff J&H Web Technologies created.
2010-01-01	(Early 2010) Inventor Henal Patel began work on the invention.
2010-09-01	(By September 2010) Patel developed the technology to mass unsubscribe.
2011-08-29	Plaintiff publicly released its Unlistr 1.0 software.
2012-03-09	Priority Date for ’342 Patent.
2012-05-01	Plaintiff developed a mobile version of its Unlistr application.
2015-01-13	U.S. Patent No. 8,935,342 issued.
2018-02-21	Complaint 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 January 13, 2015

The Invention Explained

• Problem Addressed: The patent addresses the problem that users become subscribed to numerous electronic mailing lists, and unsubscribing can be "time consuming and complicated" because mailers use different methods, such as requiring a reply email, clicking an "opt out" link, or navigating a preferences webpage (’342 Patent, col. 1:56-col. 2:8).
• The Patented Solution: The invention is a computing method that automates the process. It accesses a user's email accounts, processes messages to identify which ones are from subscription lists, and then identifies the specific method required to unsubscribe from each list by examining email headers (e.g., a "List-Unsubscribe" header) or the email body (e.g., for unsubscribe hyperlinks) (’342 Patent, Abstract; col. 2:40-53). The system then presents the identified subscriptions to the user and, upon user selection, executes the unsubscription action.
• Technical Importance: The technology aimed to provide a bulk, automated solution to email subscription management at a time when, according to the inventor, no such tool was available (Compl. ¶14).

Key Claims at a Glance

• The complaint asserts independent claim 1 (Compl. ¶¶8, 25).
• Essential elements of independent claim 1 include:
  • identifying one or more email accounts;
  • accessing the mailboxes associated with the email accounts;
  • processing at least a subset of the email messages in the mailboxes to identify those originating with a subscription list;
  • processing at least one email message associated with a subscription list to identify methods of unsubscribing from the subscription, by either:
    • identifying list-unsubscribe headers in a message header; or
    • identifying unsubscribe methods within the message body;
  • presenting to the user the subscriptions previously identified; and
  • unsubscribing from at least a single subscription in response to a user request.
• The complaint notes Plaintiff reserves the right to assert additional claims, including dependent claims 2-9 and claims 14 and 16 (Compl. ¶¶27-28).

III. The Accused Instrumentality

• Product Identification: Defendant’s "Unsubscriber.com tool" (the "Accused Product") (Compl. ¶25).
• Functionality and Market Context: The complaint alleges the Accused Product is a tool for making, using, selling, or offering to sell methods and systems for unsubscribing from email lists (Compl. ¶25). The complaint does not provide specific details on the technical operation of the Unsubscriber.com tool itself. Instead, it alleges that the tool performs the method disclosed and claimed in the ’342 Patent (Compl. ¶25). A screenshot included in the complaint shows the user interface of Plaintiff's own "Unlistr" product, which displays a list of detected subscriptions (e.g., "AmazonLocal Deals," "Mint.com") next to checkboxes and an "Unsubscribe!" button, illustrating the type of functionality central to the dispute (Compl. p. 7).

IV. Analysis of Infringement Allegations

The complaint references a claim chart attached as Exhibit B but does not include the exhibit (Compl. ¶27). The infringement theory must therefore be summarized from the complaint's narrative allegations. Plaintiff alleges that Defendant’s Unsubscriber.com tool directly infringes at least claim 1 of the ’342 Patent by performing the claimed method (Compl. ¶25).

The complaint includes several screenshots of the Plaintiff's "Unlistr" application, which it alleges practices the patent (Compl. ¶23). These visuals illustrate the patented method that the Defendant is accused of infringing. One screenshot displays the "Scan Results" from the Unlistr application, showing a list of identified subscription senders like "@gmail.com" and "frugalcouponliving.com" (Compl. p. 6). Another set of screenshots from the "Unlistr Mobile!" application shows a list of identified subscriptions with corresponding checkboxes, a button labeled "Unsubscribe!", and a status screen that reads "Unlistr is processing unsubscribe actions on your behalf" (Compl. p. 7). These visuals depict the claimed steps of identifying subscriptions, presenting them to a user, and acting on a user's request to unsubscribe.

• Identified Points of Contention:
  • Scope Questions: A central question may be the scope of "subscription list." The patent provides general context, but a dispute could arise over whether the accused tool's definition of a "subscription" aligns with the patent's meaning, particularly if the accused tool also identifies and acts on transactional emails or other communications not explicitly contemplated by the patent.
  • Technical Questions: The complaint alleges the Accused Product performs the claimed steps but provides no direct evidence (such as screenshots or technical documents) of its operation. A key factual question will be whether the Unsubscriber.com tool actually performs the specific steps of "identifying unsubscribe methods" by parsing message headers and bodies, as required by the claim, or if it uses a different technical mechanism to achieve a similar outcome.

V. Key Claim Terms for Construction

• The Term: "identifying unsubscribe methods within the message body"

• Context and Importance: This term is critical because it defines one of the two core technical pathways for finding a way to unsubscribe. The patent contrasts this with the more structured "list-unsubscribe headers" method. The breadth of this "message body" analysis will directly impact the scope of infringement.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself is broad, covering "identifying unsubscribe methods" without limitation to a specific technique. The specification supports this by describing multiple methods, such as collecting hyperlinks containing keywords like "Unsubscribe" or "Opt-out" and collecting hyperlinks behind images, suggesting the term encompasses various heuristic approaches (’342 Patent, col. 6:20-41; col. 6:60-65).
  • Evidence for a Narrower Interpretation: A defendant might argue the term should be limited to the specific embodiments disclosed. The patent describes a process of scanning for specific keywords ("Unsubscribe", "Opt-out", "Click Here") and then examining a limited number of characters that follow to find a hyperlink (’342 Patent, Fig. 3; col. 6:30-54). An argument could be made that this term requires an active search for such keywords, not merely identifying any and all hyperlinks in a footer.

• The Term: "unsubscribing from, at least a single subscription"

• Context and Importance: This is the final active step of the method. Whether this step is met by simply initiating an action (e.g., sending a "mailto:" email or navigating to a URL) or requires a confirmed successful outcome will be important for infringement analysis.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent describes a range of actions that constitute unsubscribing. This includes creating and sending a "mailto:" email, which does not guarantee a successful outcome but completes the user-facing action (’342 Patent, col. 5:36-44). It also includes executing a button on a webpage or populating a textbox and submitting a form, actions which initiate but do not necessarily confirm the unsubscription (’342 Patent, col. 8:41-61).
  • Evidence for a Narrower Interpretation: The specification discusses examining a webpage for a "confirmation message" (e.g., "successfully unsubscribed," "you have been unsubscribed") to mark a URL as "Automatically unsubscribed" (’342 Patent, col. 8:22-34). This could support an argument that the term "unsubscribing" requires some form of confirmation that the action was completed, not just initiated.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant induces infringement by providing product literature, marketing materials, and a website that "advertise and encourage" end-users to use the Accused Product in an infringing manner. It is also alleged that Defendant supplies the software that performs the claimed method (Compl. ¶26).
• Willful Infringement: The willfulness allegation is based on post-suit knowledge. The complaint alleges that "Since at least the filing of this lawsuit, Defendant had actual or constructive knowledge of the ’342 Patent" (Compl. ¶26).

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

1. A central issue will be one of claim scope: How broadly will the court construe the term "identifying unsubscribe methods within the message body"? Will it be limited to the specific keyword-based heuristics described in the patent's embodiments, or will it be interpreted more broadly to cover any automated analysis of an email's body that locates a functional unsubscribe link?

2. A key evidentiary question will be one of technical operation: As the complaint lacks technical details or visuals of the accused Unsubscriber.com tool, the case will depend on evidence produced during discovery. The critical question will be whether discovery shows that the accused tool performs the specific identification and processing steps recited in claim 1, or if it achieves an unsubscription function through a technically distinct, non-infringing method.