Peter Pedersen v. Ziff Davis Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Peter Pedersen (Denmark)
  • Defendant: Ziff Davis, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:22-cv-00597, W.D. Tex., 04/17/2023
• Venue Allegations: Venue is alleged based on Defendant maintaining regular and established places of business within the Western District of Texas, including offices in Austin and San Antonio.
• Core Dispute: Plaintiff alleges that Defendant’s email marketing platforms infringe a patent related to a system for managing the distribution of electronic messages based on recipient-defined profiles.
• Technical Context: The technology concerns targeted digital communication systems, specifically those that give message recipients granular control over the content they receive from various senders ("messengers").
• Key Procedural History: The complaint is a First Amended Complaint filed by stipulation of the parties. No other significant procedural history, such as prior litigation or administrative proceedings involving the patent, is mentioned.

Case Timeline

Date	Event
2000-07-12	U.S. Patent No. 6,965,920 Priority Date (Prov. App.)
2005-11-15	U.S. Patent No. 6,965,920 Issued
2023-04-17	First Amended Complaint Filed

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

U.S. Patent No. 6,965,920: Profile Responsive Electronic Message Management System (Issued Nov. 15, 2005)

• The Invention Explained:
  • Problem Addressed: The patent describes the inefficiency and annoyance associated with untargeted mass communication, such as "spam e-mail" and "junk mail" (’920 Patent, col. 1:60-64). It notes that existing customer relationship management (CRM) systems are often sender-controlled, making it difficult for individual recipients to manage their communication preferences across multiple information suppliers ('920 Patent, col. 1:45-53). The patent also identifies a deficiency in prior art systems that do not allow both the message sender and the recipient to define parameters for message delivery ('920 Patent, col. 2:9-25).
  • The Patented Solution: The invention proposes a centralized message management system where both "messengers" (senders) and "recipients" (end-users) can create and maintain profiles ('920 Patent, Abstract). A recipient can create a profile that specifies rules for receiving messages, including which messengers they will accept messages from and how those messages should be delivered ('920 Patent, col. 12:27-33). An "individual message generator" then acts as a matching engine, accessing the database to combine messages submitted by messengers with the corresponding delivery preferences defined by recipients ('920 Patent, col. 12:40-45). The overall architecture is depicted in Figure 4, which shows distinct workflows for recipient profile input (100), messenger profile input (200), and message input (300) feeding into an "Individual Message Processor" (410).
  • Technical Importance: The described approach aims to shift control over message delivery to the recipient, thereby increasing the relevance of communications and reducing unwanted messages ('920 Patent, col. 2:26-38).
• Key Claims at a Glance:
  • The complaint asserts at least independent claim 1 (Compl. ¶17).
  • The essential elements of Claim 1 include:
    • An electronic computer system in communication with a global network and an electronic message management database.
    • A "recipient profile application" for receiving profile data from recipients, with the data including delivery parameters specified by the recipient for "where, when and how specific types of messages from specific messengers are delivered".
    • A "messenger profile application" for receiving 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 a message for a recipient "according to the delivery parameters" specified by that recipient.
  • The complaint does not explicitly reserve the right to assert dependent claims, but states infringement of "one or more claims" (Compl. ¶17).

III. The Accused Instrumentality

• Product Identification: The accused instrumentalities are Defendant's "iContact email marketing platform" and its "Campaigner product" (Compl. ¶15).
• Functionality and Market Context: The complaint identifies the accused instrumentalities as email marketing platforms, providing hyperlinks to their respective marketing websites (Compl. ¶15). The complaint does not provide specific details regarding the technical operation or architecture of the iContact or Campaigner platforms, beyond their general function in the email marketing sector.

IV. Analysis of Infringement Allegations

The complaint references a claim chart in an "Exhibit B" that purports to describe how the elements of claim 1 are infringed (Compl. ¶24). However, this exhibit was not attached to the filed complaint. The complaint's narrative allegations state that Defendant directly infringes by "making, using, testing, selling, offering for sale and/or importing" the accused products (Compl. ¶17). It further alleges that Defendant provides materials such as "product manuals, brochures, videos, demonstrations, and website materials" that instruct users on using the accused products (Compl. ¶18). Without the claim chart, a detailed element-by-element analysis based on the complaint is not possible.

• Identified Points of Contention:
  • Scope Questions: A central question may be whether the accused platforms' functionality for managing subscriber preferences meets the "recipient profile application" limitation. The dispute could turn on whether a standard unsubscribe or preference center, typically controlled by the sender (i.e., Defendant's customer), can be considered an application where the end recipient specifies delivery parameters for "specific messengers" as contemplated by the patent.
  • Technical Questions: A key factual question will be how the accused platforms actually generate and send messages. The case may require evidence on whether the iContact and Campaigner systems function as a claimed "individual message generator" that dynamically matches messages to recipient-defined rules, or if they operate more like a traditional mailer that sends a static message to a list managed by the sender.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

• The Term: "recipient profile application"
• Context and Importance: This term appears to be the core of the invention, as it describes the mechanism by which end-users control message delivery. The construction of this term will be critical to determining infringement. Practitioners may focus on this term because its scope will likely define whether the patent covers conventional email marketing platforms, where senders manage subscriber preferences, or is limited to systems where recipients have more direct and centralized control over multiple senders.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself requires only that the application is "for receiving recipient profile data from recipients" ('920 Patent, col. 12:25-26). An argument could be made that any web form or preference center where a recipient enters information, regardless of who administers it, satisfies this language.
  • Evidence for a Narrower Interpretation: The specification suggests a more robust, recipient-centric system. The summary states an objective is to have a system where "each individual recipient could access a rule set and maintain the parameters of his/her own message profile" ('920 Patent, col. 2:27-30). The detailed description of the recipient profile system (100) describes a process where the recipient logs on and selects from a list of available "messengers" to define preferences for each one ('920 Patent, col. 9:6-14), suggesting a single interface for managing multiple senders, rather than a sender-specific preference page.

VI. Other Allegations

• Indirect Infringement: The complaint alleges facts that may support a claim for induced infringement. It states that Defendant provides "product manuals, brochures, videos, demonstrations, and website materials encouraging its users to purchase and instructing them to use Defendant's Accused Products" (Compl. ¶18).
• Willful Infringement: The complaint does not use the term "willful infringement." However, it does request a judgment that the case is "exceptional" under 35 U.S.C. § 285, which allows for an award of attorneys' fees (Compl. p. 6, ¶C). As a potential basis for this, the complaint alleges that Defendant "did not have a reasonable basis for believing that the claims of the '920 Patent were invalid" (Compl. ¶20).

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

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

1. A core issue will be one of definitional scope: Does the term "recipient profile application", as described in a patent focused on recipient-driven control over multiple messengers, read on the subscriber preference management features of conventional sender-centric email marketing platforms like iContact and Campaigner?
2. A key evidentiary question will be one of technical operation: Plaintiff will need to produce evidence demonstrating that the accused platforms actually perform the specific function of the claimed "individual message generator"—dynamically matching messages to recipient-specified delivery rules—rather than simply distributing a sender's message to a list of subscribers.