Peter Pedersen v. Adobe Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Peter Pedersen (Denmark)
  • Defendant: Adobe, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:22-cv-00583, W.D. Tex., 06/08/2022
• Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant has regular and established places of business in the district, including a specific office in Austin, Texas.
• Core Dispute: Plaintiff alleges that Defendant’s Marketo email marketing platform infringes a patent related to a profile-responsive electronic message management system.
• Technical Context: The technology at issue addresses methods for managing the distribution of electronic messages by allowing both message senders and recipients to define profiles and rules governing message delivery.
• Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

Date	Event
2000-07-12	U.S. Patent No. 6,965,920 Priority Date
2005-11-15	U.S. Patent No. 6,965,920 Issued
2022-06-08	Complaint Filed

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

• Patent Identification: U.S. Patent No. 6,965,920, "Profile Responsive Electronic Message Management System," issued November 15, 2005 (the "’920 Patent").

The Invention Explained

• Problem Addressed: The patent identifies the problem of inefficient and untargeted mass electronic communication, such as "spam e-mail," which annoys receivers and is ineffective for senders (’920 Patent, col. 1:58-63). It also notes the difficulty for individual users to manage their communication preferences across multiple information suppliers, as each supplier typically maintains its own separate customer relations management (CRM) system (’920 Patent, col. 1:45-53).
• The Patented Solution: The invention proposes a centralized electronic message management system where both message initiators ("messengers") and intended recipients can create and maintain profiles that govern message distribution (’920 Patent, Abstract). A recipient can define a profile specifying which messengers they will receive content from and how it should be delivered, while a messenger can define their own profile and submit messages for distribution (’920 Patent, col. 2:55-64). An "individual message generator" then uses these combined rule sets to distribute messages only to the appropriate, willing recipients in their preferred format (’920 Patent, col. 2:64-67).
• Technical Importance: The system aims to solve the "junk mail" problem by creating a central hub where message filtering rules are controlled by the recipient, not just the sender, thereby increasing the relevance of communications (’920 Patent, col. 2:26-32).

Key Claims at a Glance

• The complaint asserts at least independent claim 1. (Compl. ¶17).
• Essential elements of independent claim 1 include:
  • An electronic computer system in communication with a global network and an electronic message management database.
  • The computer system having a "recipient profile application" for receiving profile data from recipients, with the data including delivery parameters specifying how messages are delivered.
  • A "messenger profile application" for receiving profile data from messengers, including identifying data.
  • A "message input application" for receiving message files from a messenger.
  • An "individual message generator" that accesses the database to generate and send an individual message to a recipient according to the specified delivery parameters.
• The complaint does not explicitly reserve the right to assert dependent claims, but alleges infringement of "one or more claims." (Compl. ¶17).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is "Adobe's Marketo email marketing platform." (Compl. ¶15).

Functionality and Market Context

• The complaint describes the accused instrumentality as an "email marketing platform" available to businesses and individuals throughout the United States. (Compl. ¶¶15, 21). The complaint does not provide specific details on the technical operation or architecture of the Marketo platform beyond this general description. No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references a claim chart in "Exhibit B" to describe how the accused products infringe claim 1; however, this exhibit was not attached to the publicly filed complaint. (Compl. ¶24). In lieu of a claim chart, the infringement theory is summarized below.

The complaint alleges that Adobe directly infringes at least claim 1 of the ’920 Patent by making, using, testing, and selling the Marketo platform. (Compl. ¶17). The narrative suggests that the Marketo platform embodies the claimed system for managing electronic messages. The infringement allegation rests on the theory that the Marketo platform performs the functions of receiving recipient and messenger data, receiving message content, and generating individualized messages based on stored parameters, thereby mapping onto the limitations of claim 1. (Compl. ¶¶17, 24).

• Identified Points of Contention:
  • Scope Questions: A primary question will be whether the Marketo platform, which is marketed as a tool for advertisers ("messengers"), also includes a "recipient profile application" as claimed. The dispute may center on whether the system allows message recipients to actively define and manage granular delivery profiles, or if it is a system controlled exclusively by the messenger for managing their own distribution lists.
  • Technical Questions: The complaint lacks specific factual allegations mapping Marketo's features to the claimed "applications" (recipient profile, messenger profile, message input) and the "individual message generator." A central evidentiary question will be whether the Marketo architecture contains these distinct, interacting components as required by the claim, or if its functionality is implemented in a different, non-infringing manner.

V. Key Claim Terms for Construction

• The Term: "recipient profile application"

• Context and Importance: The presence and function of this element appear central to the infringement case. The analysis will likely focus on whether the Marketo platform contains a component that allows message recipients, as opposed to message senders, to "define in advance certain parameters controlling whether a message... is forwarded to the recipient." (’920 Patent, col. 2:19-22). Practitioners may focus on this term because if the Marketo platform is found to be a sender-only tool, it may not meet this limitation.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language itself is functional: "for receiving recipient profile data from recipients... and storing the recipient data in the database." (’920 Patent, col. 11:26-29). This could be argued to cover any feature where a recipient provides information that influences delivery, such as through a preference center or even an unsubscribe mechanism.
  • Evidence for a Narrower Interpretation: The specification describes a system enabling each recipient to "designate specific or classes of messenger from whom they are willing to receive a message, and to specify how the information or messages are to be delivered." (’920 Patent, col. 2:28-32). This suggests an active, granular, recipient-controlled system, which could support a narrower construction than any generic preference-setting feature.

• The Term: "individual message generator"

• Context and Importance: This term's construction is critical for determining if the accused platform's message-sending function performs the specific combination of steps required by the patent. The question is whether it simply performs a mail-merge or if it executes the claimed logic of reconciling messenger and recipient profiles.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim describes the generator as "operative to access and utilize data and files from the database to generate an individual message." (’920 Patent, col. 11:41-43). This could be read on any system that customizes an email for a specific recipient.
  • Evidence for a Narrower Interpretation: The specification clarifies that this component "combines the data from the recipient message delivery profile database... with appropriate data from the message database" to generate messages. (’920 Patent, col. 8:46-49). Further, Figure 8 illustrates a specific process where the generator receives a message, looks up delivery profiles, and combines them to create an output file, suggesting a more structured operation than a generic email blast. (’920 Patent, Fig. 8, col. 10:59-col. 11:9).

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Adobe induces infringement by providing "product manuals, brochures, videos, demonstrations, and website materials encouraging its users to purchase and instructing them to use" the Accused Products in an infringing manner. (Compl. ¶18).
• Willful Infringement: The complaint does not use the term "willful infringement." However, it alleges that Defendant "made no attempt to design around the claims" and "did not have a reasonable basis for believing that the claims of the '920 Patent were invalid." (Compl. ¶¶19-20). In its prayer for relief, Plaintiff requests a judgment that this is an "exceptional case" under 35 U.S.C. § 285, which could entitle it to attorneys' fees. (Compl. ¶(C) at p. 6).

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

• A core issue will be one of architectural correspondence: does the Adobe Marketo platform, a tool designed for marketers, actually implement the dual-sided "recipient profile application" and "messenger profile application" architecture required by claim 1? The case may turn on whether message recipients have the kind of granular, centralized control over delivery rules envisioned by the patent.
• A key evidentiary question will be one of functional mapping: given the complaint's lack of technical specifics, Plaintiff faces the challenge of demonstrating through discovery that the accused platform's internal operations perform the specific functions of the claimed "individual message generator"—namely, combining data from distinct recipient and messenger profiles to create a message—or whether it operates on a fundamentally different logic.