Peter Pedersen v. Zendesk

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Peter Pedersen (Denmark)
  • Defendant: Zendesk, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:22-cv-00927, W.D. Tex., 09/09/22
• Venue Allegations: Plaintiff alleges venue is proper based on Defendant having regular and established places of business within the Western District of Texas, including specific office locations in Austin.
• Core Dispute: Plaintiff alleges that Defendant’s email marketing platform infringes a patent related to a system for managing the distribution of electronic messages based on profiles created by both message senders and recipients.
• Technical Context: The technology concerns profile-based, targeted electronic messaging systems, a foundational component of modern Customer Relationship Management (CRM) and digital marketing platforms designed to move beyond undifferentiated mass-messaging.
• 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

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 Invention Explained

• Problem Addressed: The patent identifies the problem of inefficient and untargeted mass communication, such as "spam e-mail" and "junk mail," which annoys receivers and is ineffective for senders. It also notes the difficulty for individuals to manage their communication preferences across multiple information providers. (’920 Patent, col. 1:52-64).
• The Patented Solution: The invention describes a centralized electronic message management system that gives both message senders ("messengers") and message receivers ("recipients") control over communication. The system allows recipients to create profiles defining what types of messages they wish to receive, from whom, and via which delivery method (e.g., email, SMS). Messengers also create profiles and submit content. An "individual message generator" then matches the content to recipient preferences to create and distribute customized messages. (’920 Patent, col. 2:54-61; col. 3:2-9). The overall system architecture is depicted in Figure 4. (’920 Patent, Fig. 4).
• Technical Importance: The described system represents a technical approach to shift a degree of control over message delivery from the recipient to the sender, aiming to increase relevance and reduce unwanted communications. (’920 Patent, col. 2:26-32).

Key Claims at a Glance

• The complaint asserts independent claim 1. (Compl. ¶17).
• The essential elements of 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 recipient-defined delivery parameters (where, when, and how messages are delivered).
  • A "messenger profile application" for receiving and storing messenger data.
  • A "message input application" for receiving message files from a messenger.
  • An "individual message generator" that uses the database to create and send an individual message to a recipient according to their specified delivery parameters.
  • A message management database that includes separate databases for recipient profiles, messenger profiles, and message data files.
• Plaintiff reserves the right to assert additional claims. (Compl. ¶17, ¶24).

III. The Accused Instrumentality

• Product Identification: The complaint identifies the accused instrumentality as "Zendesks's email marketing platform." (Compl. ¶15).
• Functionality and Market Context: The complaint does not provide specific technical details about the accused platform's operation. It is described generally as an "email marketing platform" available to businesses and individuals throughout the United States. (Compl. ¶15, ¶21). The complaint does not identify specific product names (e.g., Zendesk Sell, Support Suite) or functionalities beyond this general categorization.

IV. Analysis of Infringement Allegations

The complaint states that a claim chart is attached as Exhibit B describing how the accused products infringe claim 1 of the ’920 Patent. (Compl. ¶24). However, this exhibit was not included with the filed complaint document.

The narrative infringement theory is that Defendant makes, uses, and sells its "email marketing platform," which allegedly embodies the system claimed in the ’920 Patent. (Compl. ¶17). The core of the allegation is that the Zendesk platform provides the functionalities of the claimed system, including the various profile applications and the message generator that tailors message delivery based on stored data. (Compl. ¶15, ¶17). The complaint does not, on its face, provide a detailed element-by-element mapping of the accused platform's features to the limitations of Claim 1.

No probative visual evidence provided in complaint.

• Identified Points of Contention:
  • Scope Questions: A primary question will be whether the architecture of the Zendesk platform meets the structural requirements of Claim 1. The claim recites a specific set of interacting applications and databases within a single "electronic message management system." The defense may argue that its functionalities are implemented in a different, non-infringing architecture.
  • Technical Questions: A key factual dispute may arise over the function of the "recipient profile application". The patent appears to envision a system where the end-recipient directly controls their profile. (’920 Patent, col. 2:56-61). The case may turn on what evidence shows that Zendesk’s platform provides this specific recipient-facing control, as opposed to a system where the "messenger" (Zendesk's customer) manages recipient data and preferences on their behalf.

V. Key Claim Terms for Construction

• The Term: "recipient profile application"

• Context and Importance: This term is critical because infringement may depend on who controls the profile. The definition will determine whether a system where a "messenger" (e.g., a company using Zendesk) manages its customers' data infringes, or if the claim requires a system where the end "recipient" (the company's customer) directly accesses and defines their own delivery rules.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: Claim 1 itself describes the application's function as "for receiving recipient profile data from recipients," which does not explicitly forbid an intermediary from entering the data on the recipient's behalf. (’920 Patent, col. 11:26-28).
  • Evidence for a Narrower Interpretation: The patent's background emphasizes empowering the individual recipient to manage their own information to avoid spam. (’920 Patent, col. 2:26-32). The detailed description of an embodiment in Figure 5 depicts a workflow where the "Recipient" directly interacts with a "Recipient Profile Editor" to create their profile, suggesting the application is intended to be recipient-facing. (’920 Patent, Fig. 5; col. 13:61-64).

• The Term: "individual message generator"

• Context and Importance: The precise function of this "generator" is central to the infringement analysis. The dispute will likely focus on whether the accused platform's personalization and delivery logic performs the specific generation and combination steps required by the claim.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claim language requires the generator to "generate an individual message...according to the delivery parameters," which could arguably cover standard email personalization (e.g., mail merge) and channel selection. (’920 Patent, col. 11:40-45).
  • Evidence for a Narrower Interpretation: The specification describes the generator combining data from multiple database sources (recipient profiles, messenger profiles, message content) to "create a total output file." (’920 Patent, col. 15:1-7; Fig. 8). This may support a narrower construction requiring a more complex process of data fusion than simple content substitution.

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement by asserting 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 allege pre-suit knowledge of the patent. The basis for enhanced damages appears to be Defendant's alleged continuation of infringement after being notified of the patent by the filing of the lawsuit. (Compl. ¶19-20). The prayer for relief also requests that the case be found "exceptional." (Compl. p. 6, ¶C).

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

• A core issue will be one of functional control: Does the accused Zendesk platform provide a "recipient profile application" that allows the ultimate end-recipient of a message to directly establish and manage their own delivery parameters, as the patent's problem statement and embodiments appear to suggest? Or does control over recipient data lie exclusively with the "messenger" (Zendesk's customer), potentially creating a mismatch with the claim?
• A second determinative issue will be one of technical mapping and system architecture: Can Plaintiff produce evidence demonstrating that the accused platform contains discrete software components and database structures that map onto the specific applications ("recipient profile", "messenger profile", "message input", "individual message generator") and databases claimed as a single, integrated "electronic message management system"? The lack of technical detail in the complaint leaves this as a central open question for discovery.