DCT
6:22-cv-00775
Advanced Transactions LLC v. Advance Auto Parts Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Advanced Transactions, LLC (Georgia)
- Defendant: Advance Auto Parts, Inc. (Delaware) and E-Advance, LLC (Virginia)
- Plaintiff’s Counsel: Daignault Iyer LLP
- Case Identification: 6:22-cv-00775, W.D. Tex., 07/12/2022
- Venue Allegations: Plaintiff alleges venue is proper because Defendants have committed acts of infringement in the district and maintain regular and established places of business, including numerous retail stores, within the Western District of Texas.
- Core Dispute: Plaintiff alleges that Defendant’s integrated digital marketing systems, e-commerce platform, and mobile application infringe a portfolio of eight patents related to email marketing campaigns, mobile commerce, and global e-commerce systems.
- Technical Context: The patents relate to foundational technologies in digital marketing and e-commerce, covering the generation and tracking of email campaigns and the use of mobile devices to process electronic coupons and rewards.
- Key Procedural History: The complaint does not reference any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history concerning the patents-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2000-04-25 | Priority Date for ’555, ’594, and ’950 Patents |
| 2000-04-27 | Priority Date for ’736 Patent |
| 2000-10-06 | Priority Date for ’057, ’519, ’608, and ’529 Patents |
| 2006-06-20 | U.S. Patent No. 7,065,555 Issued |
| 2008-06-10 | U.S. Patent No. 7,386,594 Issued |
| 2010-04-06 | U.S. Patent No. 7,693,950 Issued |
| 2011-07-12 | U.S. Patent No. 7,979,057 Issued |
| 2012-04-03 | U.S. Patent No. 8,150,736 Issued |
| 2012-05-08 | U.S. Patent No. 8,175,519 Issued |
| 2017-08-29 | U.S. Patent No. 9,747,608 Issued |
| 2020-09-22 | U.S. Patent No. 10,783,529 Issued |
| 2022-07-12 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,065,555 - “System and Method Related to Generating and Tracking an Email Campaign”
- Patent Identification: U.S. Patent No. 7,065,555, “System and Method Related to Generating and Tracking an Email Campaign,” issued June 20, 2006.
- The Invention Explained:
- Problem Addressed: The patent's background describes the difficulties faced by early internet marketers in creating, tailoring, and tracking the success of email campaigns, including challenges in locating relevant recipients and allowing them to provide feedback (Compl. ¶29; ’555 Patent, col. 1:26-43).
- The Patented Solution: The invention provides a systematic method to create and track an email campaign by generating a "message template" and a separate "configuration file" containing recipient-specific data. These are merged to form a custom email for each target, and the system then tracks the responses to these custom emails (Compl. ¶¶96-99; ’555 Patent, col. 2:1-14).
- Technical Importance: The claimed invention sought to solve technological problems in existing marketing systems by making the creation and tracking of large, personalized email campaigns more efficient (Compl. ¶31).
- Key Claims at a Glance:
- The complaint asserts at least independent claim 1 (Compl. ¶92).
- Claim 1 of the ’555 Patent requires a method with the following essential elements:
- receiving an email target database comprising at least one email target;
- generating an email campaign template related to at least one email target in the received email target database, wherein this step comprises generating a message template and generating a configuration file with data related to each target, where the data is insertable in the template;
- sending a corresponding custom email to each target, formed from the template; and
- tracking the custom email sent to each target.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,386,594 - “System and method related to generating an email campaign”
- Patent Identification: U.S. Patent No. 7,386,594, “System and method related to generating an email campaign,” issued June 10, 2008.
- The Invention Explained:
- Problem Addressed: As a continuation of the application leading to the ’555 Patent, this patent addresses the same problems of creating and tracking email campaigns efficiently (Compl. ¶37; ’594 Patent, col. 1:15-45).
- The Patented Solution: The invention provides for a system, rather than a method, for conducting an email campaign. It comprises a campaign generator to create a template and configuration file from a target database, and an engine to generate and send custom emails based on that template (Compl. ¶¶106-109; ’594 Patent, col. 2:1-18).
- Technical Importance: The patent describes a system architecture intended to improve the efficiency of personalized digital marketing campaigns (Compl. ¶37).
- Key Claims at a Glance:
- The complaint asserts at least independent claim 1 (Compl. ¶103).
- Claim 1 of the ’594 Patent requires a system with the following essential elements:
- an email campaign generator that generates an email campaign template from an email target database;
- an email campaign engine that generates a custom email for each target, formed from the campaign template, and sends the custom email to each target;
- wherein the campaign template comprises a text message and a configuration file with data corresponding to each target.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,693,950 - “System and Method Related to Generating and Tracking an Email Campaign”
- Patent Identification: U.S. Patent No. 7,693,950, “System and Method Related to Generating and Tracking an Email Campaign,” issued April 6, 2010.
- Technology Synopsis: This patent, from the same family as the ’555 and ’594 patents, claims a system for conducting an email campaign (Compl. ¶43). The system comprises means for receiving information from a target database, generating message templates and configuration files, and sending custom emails formed from the templates (Compl. ¶¶115-118).
- Asserted Claims: At least independent claim 13 is asserted (Compl. ¶113).
- Accused Features: The accused features are components of Defendant's marketing system, such as email servers, that allegedly comprise a system for conducting an email campaign (Compl. ¶114).
U.S. Patent No. 7,979,057 - “Third-Party Provider Method and System”
- Patent Identification: U.S. Patent No. 7,979,057, “Third-Party Provider Method and System,” issued July 12, 2011.
- Technology Synopsis: The patent addresses problems with traditional paper coupons and early proprietary e-coupon systems by disclosing a method for processing negotiable economic credits (e.g., coupons, rewards) using a wireless handheld device (Compl. ¶¶49, 52, 53). The method involves storing a configurable filter on the device, receiving credits from a wireless network based on the filter, storing them, and transferring them via the network (Compl. ¶¶124-128).
- Asserted Claims: At least independent claim 1 is asserted (Compl. ¶122).
- Accused Features: The accused features include Defendant's mobile app and associated systems that process negotiable economic credits such as Speed Perks Rewards and gift cards (Compl. ¶123).
U.S. Patent No. 8,150,736 - “Global Electronic Commerce System”
- Patent Identification: U.S. Patent No. 8,150,736, “Global Electronic Commerce System,” issued April 3, 2012.
- Technology Synopsis: This patent sought to solve problems related to global e-commerce, such as language barriers, cultural adaptation, and inefficient multi-database systems (Compl. ¶¶61, 64). It describes a method where a computing system receives a web page request that includes a "locale identifier value" and, in response, retrieves and transmits a version of marketing information corresponding to that locale (Compl. ¶¶133-136).
- Asserted Claims: At least independent claim 1 is asserted (Compl. ¶132).
- Accused Features: The accused feature is the Advance Auto Parts webserver, which allegedly receives web page requests with locale identifiers (e.g., from the store locator) and generates a web page with marketing information specific to that locale (Compl. ¶¶133-136).
U.S. Patent No. 8,175,519 - “Third-Party Provider Method and System”
- Patent Identification: U.S. Patent No. 8,175,519, “Third-Party Provider Method and System,” issued May 8, 2012.
- Technology Synopsis: This patent, from the same family as the ’057 patent, addresses similar problems in mobile commerce (Compl. ¶78). It discloses a method of using a handheld device to request, receive, store, retrieve, and send negotiable economic credits, and then receive a message indicating the credit was utilized (Compl. ¶¶141-146).
- Asserted Claims: At least independent claim 22 is asserted (Compl. ¶140).
- Accused Features: The accused features are Defendant's marketing systems, which allegedly use handheld devices (e.g., smartphones with the Advance Auto Parts app) to manage Speed Perks Rewards and gift cards (Compl. ¶141).
U.S. Patent No. 9,747,608 - “Third-Party Provider Method and System”
- Patent Identification: U.S. Patent No. 9,747,608, “Third-Party Provider Method and System,” issued August 29, 2017.
- Technology Synopsis: This patent, also from the ’057 patent family, addresses mobile commerce systems (Compl. ¶84). It discloses a method where a portable electronic device transmits a request for a data structure (representing a negotiable economic credit) to a computer system and receives the data structure in response, which includes authentication information (Compl. ¶¶151-152).
- Asserted Claims: At least independent claim 10 is asserted (Compl. ¶150).
- Accused Features: The accused features are Defendant's marketing systems, where a smartphone with the Advance Auto Parts app allegedly transmits a request to and receives a data structure (e.g., a reward or gift card) from an Advance Auto Parts server (Compl. ¶¶151-152).
U.S. Patent No. 10,783,529 - “Third-Party Provider Method and System”
- Patent Identification: U.S. Patent No. 10,783,529, “Third-Party Provider Method and System,” issued September 22, 2020.
- Technology Synopsis: As the most recent patent from the ’057 patent family, this patent also relates to mobile commerce (Compl. ¶90). It claims a method of storing a data structure on a portable electronic device, where the data structure encodes information for a negotiable economic credit and includes authentication information, and then detecting that a user has initiated a transaction with the device (Compl. ¶¶160-161).
- Asserted Claims: At least independent claim 8 is asserted (Compl. ¶159).
- Accused Features: The accused features include Defendant's marketing systems, where a smartphone with the Advance Auto Parts app allegedly stores a data structure for a reward or gift card (Compl. ¶160).
III. The Accused Instrumentality
- Product Identification: The complaint collectively identifies the accused instrumentalities as the “Advance Auto Parts Marketing Products and Services” and the underlying “Advance Auto Parts Marketing System” (Compl. ¶¶11-12). This includes Defendant's marketing emails, the Speed Perks Rewards Program, the Advance Auto Parts Mobile App, gift cards, the website, and online and in-store shopping services (Compl. ¶11).
- Functionality and Market Context: The complaint alleges these products and services form an integrated digital marketing and e-commerce platform. The system allegedly collects customer data upon sign-up and sends promotional and transactional emails (Compl. ¶¶93-94, p. 33, 37). The mobile application for iOS and Android allows users to manage their "Speed Perks" rewards, pay for items using various methods including gift cards, and locate stores (Compl. ¶123, p. 101, 105). The website provides a store locator that allegedly uses geographic information to provide localized content (Compl. ¶133, p. 142-143).
IV. Analysis of Infringement Allegations
’555 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a method for conducting an email campaign, comprising the steps of: receiving an email target database, said email target database comprising at least one email target | The system receives personal and contact information from users who sign up for an account or newsletter, which constitutes receiving an email target database (Compl. p. 33). | ¶94 | col. 2:6-8 |
| generating an email campaign template related to at least one email target in the received email target database | The system generates email templates, such as the "Thanks for Creating an Account!" email, which are related to the user who signed up. | ¶95 | col. 2:8-10 |
| wherein the step of generating an email campaign template...comprises...generating a message template | The generation of the template includes generating the base message content, as shown in the email screenshot (Compl. p. 40). | ¶96 | col. 2:11-12 |
| and generating a configuration file to contain data related to each of the at least one email target, wherein the data is insertable in the generated message template | The system generates data related to the specific email target, such as images and personalized text, which is then inserted into the message template. | ¶97 | col. 2:12-14 |
| sending to each of the at least one email target a corresponding custom email, wherein the custom email is formed from the email campaign template | The system sends the final, customized email, such as the "Welcome to Speed Perks" email, to the user after forming it from the template and user-specific data (Compl. p. 48). | ¶98 | col. 2:15-17 |
| tracking the custom email sent to each of the at least one email target | The system tracks user interactions with emails and services using technologies like cookies and pixel tags, as described in its privacy policy (Compl. p. 52). | ¶99 | col. 1:41-43 |
’594 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a system for conducting an email campaign, comprising: an email campaign generator that generates an email campaign template from an email target database | Defendant's marketing system, including its email servers, comprises a generator that creates email templates based on a database of user information. | ¶¶104, 106 | col. 2:1-4 |
| wherein said email campaign template comprises a text message and a configuration file that includes data from said email target database | The generated template allegedly includes a text message component and a configuration file component containing user-specific, insertable data. | ¶¶107, 108 | col. 2:4-7 |
| an email campaign engine that generates a custom email corresponding to each of a plurality of email targets, wherein said custom email is formed... | The system includes an engine that forms a custom email, such as a welcome email, by combining the template with the user-specific data. | ¶109 | col. 2:8-11 |
| and sends said custom email to each of said plurality of email targets | The system's email servers send the final custom email to the user. An exemplary sent email is depicted in the complaint (Compl. p. 77). | ¶109 | col. 2:11-12 |
- Identified Points of Contention:
- Scope Questions: A central question for the ’555 and ’594 patents will be whether Defendant's system for generating personalized marketing emails meets the specific two-part "message template" and "configuration file" architecture required by the claims. The defense may argue that its system is a more integrated process that does not generate a distinct "configuration file" that is later merged with a "template." The complaint's use of a screenshot of a welcome email (Compl. p. 77) as evidence for this limitation raises the question of what technical evidence supports this specific architectural allegation.
- Technical Questions: For the ’555 Patent's "tracking" step, a point of contention may be whether the general-purpose web analytics technologies (cookies, pixel tags) cited in the privacy policy (Compl. p. 52) perform the specific function of "tracking the custom email" as contemplated by the patent, which focuses on monitoring and tracking responses to the campaign itself (’555 Patent, col. 1:35-43).
V. Key Claim Terms for Construction
The Term: "email campaign template" (asserted in claims of ’555 and ’594 patents)
Context and Importance: The infringement theory for the email-related patents hinges on this term. Plaintiff's allegations map Defendant's various emails to this claimed structure. Practitioners may focus on whether this term requires a specific two-part structure (a static template plus a separate data file) or can be construed more broadly to cover any system that generates personalized emails from a base format.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent abstract describes generating a template "from an email target database," which could suggest that any email format populated with database information meets the definition (’555 Patent, Abstract).
- Evidence for a Narrower Interpretation: Claim 1 of the ’555 Patent explicitly breaks the step of "generating an email campaign template" into two sub-steps: "generating a message template" and "generating a configuration file." This language may support a narrower construction requiring two distinct, generated components that are subsequently combined.
The Term: "negotiable economic credit" (asserted in claims of ’057, ’519, ’608, and ’529 patents)
Context and Importance: This term is central to the patents directed at the mobile application. Its scope will determine whether Defendant's loyalty points ("Speed Perks") and gift cards fall within the claims.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification provides a broad, non-limiting list of examples, including "electro[nic] product discount coupons and other negotiable economic credits, such as enterprise awards, cash, credit, etc." (Compl. ¶49; ’057 Patent, col. 1:29-33). This broad list could support reading the term on modern digital rewards and gift cards.
- Evidence for a Narrower Interpretation: The background of the ’057 patent focuses heavily on the problems of traditional paper "coupons" (Compl. ¶52; ’057 Patent, col. 2:28-57). A defendant could argue that the term should be limited to coupon-like instruments and not broader stored-value products like gift cards, which may operate differently.
VI. Other Allegations
- Indirect Infringement: The complaint includes conclusory allegations that Defendant’s actions "aid, abet, or contribute to the infringement of third parties" (Compl. ¶21), but it does not plead specific facts (e.g., providing instructions to users) to support a claim for induced or contributory infringement.
- Willful Infringement: The complaint does not contain an explicit claim for willful infringement or allege any facts related to pre-suit knowledge of the patents-in-suit.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technical mapping: can the specific, multi-step processes and system architectures described in the patents—such as the "message template" and "configuration file" of the email patents or the "filter" and "data structure" of the mobile commerce patents—be mapped onto the functionality of Defendant’s modern, integrated retail platform? Or will the defense demonstrate a fundamental mismatch in technical operation?
- A second key question will be one of definitional scope: how broadly will the court construe foundational terms like "email campaign template" and "negotiable economic credit"? The case may turn on whether these terms, rooted in the technology of the early 2000s, can be read to cover the accused functionality of Defendant’s current marketing and loyalty programs.
- A final question concerns claim scope across families: Plaintiff has asserted multiple patents from two distinct families. A central issue will be whether the accused systems—a web/email marketing platform and a mobile app—can be shown to infringe claims from both the email campaign family (’555, ’594, ’950) and the mobile commerce family (’057, ’519, ’608, ’529), or if the distinct technologies will create separate and potentially divergent infringement analyses.