Peter Pedersen v. Upland Software Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Peter Pedersen (Denmark)
  • Defendant: Upland Software, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:22-cv-00594, W.D. Tex., 06/09/2022
• Venue Allegations: Venue is alleged to be proper based on Defendant having "regular and established places of business" within the Western District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s Adestra email marketing platform infringes a patent related to a profile-responsive electronic message management system.
• Technical Context: The technology concerns systems for managing the distribution of electronic messages, where recipients can define profiles to control the types of messages they receive and how they are delivered.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or licensing history related to the patent-in-suit.

Case Timeline

Date	Event
2000-07-12	’920 Patent Priority Date
2005-11-15	’920 Patent Issue Date
2022-06-09	Complaint Filing Date

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

U.S. Patent No. 6,965,920 - Profile Responsive Electronic Message Management System

• Patent Identification: U.S. Patent No. 6,965,920, issued November 15, 2005. (Compl. ¶12).

The Invention Explained

• Problem Addressed: The patent addresses the inefficiency and annoyance of mass-messaging techniques like "spam e-mail" and "junk mail," which result from a sender's inability to effectively target interested recipients and a recipient's difficulty in managing communication preferences across many different senders. (’920 Patent, col. 1:56-67).
• The Patented Solution: The invention describes a centralized electronic message management system where both message senders ("messengers") and recipients can create and manage profiles. The system allows a recipient to access and maintain a profile that specifies which messengers they will receive messages from and how those messages should be delivered. (’920 Patent, col. 2:26-37). The system then acts as an intermediary, generating and distributing messages from messengers only to those recipients whose profiles permit it, thereby giving recipients granular control. (’920 Patent, Abstract; Fig. 4).
• Technical Importance: The patented approach sought to shift the locus of control over message delivery from the sender to the recipient, providing a technical framework to reduce unwanted communications and improve the relevance of delivered information. (’920 Patent, col. 2:26-42).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶17).
• The essential elements of independent claim 1 are:
  • An electronic message management system comprising an electronic computer system and a message management database.
  • A "recipient profile application" for receiving and storing profile data from recipients, including delivery parameters.
  • A "messenger profile application" for receiving and storing profile data from messengers.
  • A "message input application" for receiving message files from a messenger.
  • An "individual message generator" that accesses the database to generate an individual message for a recipient as specified by the messenger, but delivered according to the parameters in the recipient’s profile.
• The complaint reserves the right to assert additional claims. (Compl. ¶17).

III. The Accused Instrumentality

Product Identification

The accused instrumentality is "Upland's Adestra email marketing platform." (Compl. ¶15).

Functionality and Market Context

The complaint identifies the accused instrumentality as an "email marketing platform" and provides a URL for it. (Compl. ¶15). It does not provide further details on the specific technical functionality of the platform or any allegations regarding its commercial importance or market position.

IV. Analysis of Infringement Allegations

The complaint alleges that the accused Adestra platform directly infringes at least claim 1 of the ’920 Patent. (Compl. ¶17). It states that a claim chart describing the infringement is attached as Exhibit B. (Compl. ¶24). However, this exhibit was not filed with the complaint. The narrative infringement theory is that by making, using, and selling the Adestra platform, the Defendant practices the system claimed in the patent. (Compl. ¶17). The complaint does not provide a paragraph-by-paragraph mapping of accused functionality to claim elements.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "recipient profile application"

• Context and Importance: The infringement analysis may turn on the nature of this application. Practitioners may focus on this term because its definition will determine whether the claim requires a system that allows the ultimate end-recipient of a message to directly create and manage their own profile, or if a system where the "messenger" (e.g., Upland's customer) manages recipient preferences on their behalf is sufficient.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: Claim 1 itself recites the application is "for receiving recipient profile data from recipients," which does not explicitly require a direct user interface for the recipient, potentially allowing for indirect data collection. (’920 Patent, col. 11:25-27).
  • Evidence for a Narrower Interpretation: The specification suggests direct recipient interaction, stating "each individual recipient could access a rule set and maintain the parameters of his/her own message profile." (’920 Patent, col. 2:26-30). The patent also describes a "recipient computer system" (Fig. 3a, 60) distinct from a "messenger computer system" (Fig. 3b, 70), which may imply that the system is intended to be directly accessed by both parties.

• The Term: "messenger"

• Context and Importance: This term is central to mapping the actors in the accused scenario (Upland, its customer, and the email end-user) to the patent's framework. The relationship between Upland's customer (the party sending emails) and the "messenger" of the claims will be a key issue.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent abstractly defines a messenger as an "initiator of messages." (’920 Patent, col. 3:2-4). This could broadly cover any entity that sends a message using the system.
  • Evidence for a Narrower Interpretation: The detailed description suggests a more structured role, where messengers have profiles in the system that recipients can browse and select from, indicating a system where messengers offer services to recipients. (’920 Patent, col. 9:5-10). This could support a narrower construction than simply any user of a SaaS marketing platform.

VI. Other Allegations

• Indirect Infringement: The complaint alleges that Defendant induces infringement by providing "product manuals, brochures, videos, demonstrations, and website materials" that instruct and encourage users to use the accused platform in an infringing manner. (Compl. ¶18).
• Willful Infringement: The complaint does not explicitly plead willful infringement. However, it includes allegations that could form the basis for such a claim, stating on information and belief 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). The complaint does not allege pre-suit knowledge of the patent.

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

• A central issue will be one of definitional scope and user role: can the term "recipient profile application", as described in a patent that appears to contemplate direct end-user profile management, be construed to read on an email marketing platform where the sender (the "messenger" or its customer) manages lists and preferences on behalf of the ultimate recipient?
• A second key question will be architectural mapping: does the accused Adestra platform contain discrete components that map to the separately claimed "recipient profile application", "messenger profile application", and "message input application", or are these functions so integrated that they do not exist as the distinct elements required by the claim? The answer will depend on evidence regarding the platform's software architecture.