Litigation

Peter Henrik Pedersen v. Constant Contact, Inc.

Active

6:22-cv-00922

Filed
2022-07-15

Patents at issue (1)

6965920PTAB: final decision

Summary

Infringement action by Peter Henrik Pedersen against Constant Contact, Inc. concerning US Patent 6,965,920. The case was active.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

Case Overview: Peter Henrik Pedersen v. Constant Contact, Inc. (6:22-cv-00922, W.D. Tex.)

Parties and accused technology. Plaintiff Peter Henrik Pedersen is an individual inventor and the sole named inventor of U.S. Patent No. 6,965,920; Unified Patents classifies him as an "NPE (Individual)" and RPX describes his filings as a "sole litigation campaign" launched in November 2021, with Pedersen "believed to be associated with AiPi Solutions" (Unified Patents, Mar. 26, 2026). He is represented in the WDTX campaign by William P. Ramey III (Ramey LLP), who filed the complaint here (Dkt. 1, Justia docket). Defendant Constant Contact, Inc. is a Waltham, Massachusetts-based SaaS company (founded 1995 as Roving Software; renamed Constant Contact in 2004) that sells email marketing, SMS, social, and marketing-automation tools to small businesses and nonprofits; it is private-equity-backed (carved out of Endurance International Group in 2021; Clearlake Capital became majority owner in 2024). The accused product is Constant Contact's email marketing platform: across Pedersen's parallel suits, RPX reports defendants were "accused of infringement through the provision of their respective email marketing platforms," with the asserted patent covering recipient-profile-based management of "where, when and how specific types of messages from specific messengers are delivered to the recipient." (The complaint's Exhibits A–B, the patent and claim chart, were not publicly reviewed here, so the exact feature mapping rests on the campaign-wide pattern.)

Patent and procedural posture. The '920 patent, titled "Profile Responsive Electronic Message Management System" (issued Nov. 15, 2005), claims an electronic message management system that maintains recipient and messenger profile databases and uses an "individual message generator" to produce messages tailored to recipient-specified delivery parameters; dependent claims 14–17 add recipient-profile compatibility matching and delivery channels (email, voice, fax, digital transmission, SMS, etc.) (Fed. Cir. slip op. in Pedersen v. Unified Patents, No. 24-2090; PTAB IPR2023-00029 petition). The case was filed in the Western District of Texas (Waco Division) and assigned to Judge Alan D. Albright, with a jury demand under 35 U.S.C. § 271; Constant Contact was served Sept. 14, 2022, and its answer deadline was extended to Nov. 21, 2022, with appearances by Neil McNabnay and Aaron Pirouznia (Justia docket, Dkts. 6–8). Note: the court docket reflects a Sept. 8, 2022 filing date, which conflicts with the 2022-07-15 date in the case metadata — I treated the docket as authoritative. Venue matters because Albright's Waco court was, until the 2022–2023 venue-reform wave, the most patentee-friendly forum in the country, and Pedersen deliberately filed one case there against each defendant in the campaign rather than joining them.

Why the case is notable. This suit is one slice of a broad single-patent campaign — Unified Patents lists assertions against Google, Microsoft, Yahoo/Verizon, Oracle, Salesforce, Zoho, Adobe, Intuit, Wix, Zendesk, Blackbaud, Monday.com, Aurea Software, Mailgun, and Ziff Davis, among others — making it a textbook example of serial NPE-style enforcement by an individual inventor against the email-marketing industry. Its defining feature is the IPR linkage: Unified Patents filed IPR2023-00029 on Oct. 14, 2022, challenging claims 1 and 14–17 as obvious over Funk in view of Law or Kamakura; the PTAB's final written decision (May 10, 2024) invalidated all challenged claims, and the Federal Circuit affirmed on March 26, 2026 (Pedersen v. Unified Patents, No. 24-2090, nonprecedential, Lourie and Hughes, JJ.). Oracle separately filed IPR2023-00867 against the same patent, whose record expressly lists this Constant Contact case. The Unified portal still lists this district case as "Open," and I could not verify from public sources whether a stay or judgment has been entered here — but with the asserted claims held unpatentable and affirmed on appeal, the PTAB/Federal Circuit outcome is effectively dispositive of the infringement case, and the litigation is chiefly significant now as evidence of how Unified Patents' anti-NAF challenges can unwind a multi-defendant campaign in the WDTX.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Case Developments Memorandum

Peter Henrik Pedersen v. Constant Contact, Inc.
Case No. 6:22-cv-00922-ADA (W.D. Tex., Waco) — Judge Alan D. Albright
Patent-in-suit: U.S. Patent No. 6,965,920 ("Profile Responsive Electronic Message Management System")

A note on scope: my research captured the docket's early period (Sept. 2022) in detail, plus the parallel PTAB/Federal Circuit record. The mid-case district docket (answer through trial or dismissal) was not accessible in the sources retrieved, so several segments below are flagged as unverified rather than reconstructed from memory.

1. Filing & Initial Pleadings

  • Complaint filed 2022-09-08 (docket entry 1): Pedersen sued Constant Contact, Inc. for infringement of the '920 patent, with a jury demand, under 35 U.S.C. § 271, before Judge Albright. Filed by William P. Ramey III (Ramey LLP). (Note: the case metadata you provided lists "Filed: 2022-07-15," but the W.D. Tex. docket via Justia and Unified Patents' litigation portal both reflect a September 8, 2022 (or Sept. 7–9, 2022 per various trackers) filing for this case number. I treat the docket date of 2022-09-08 as the operative filing date.)
  • Same-day filings: AO 120 patent form (dkt. 2), summons request (dkt. 3), certificate of interested parties (dkt. 4); summons issued (dkt. 5, 2022-09-08). The case was part of a coordinated multi-defendant campaign by Ramey LLP on behalf of Pedersen over the same '920 patent — simultaneously filed against Blackbaud, Monday.com, Wix.com, and Zendesk (e.g., 6:22-cv-00927), and previously against Madwire (6:22-cv-00590) and Oracle (6:22-cv-00410), among others.
  • Service: Constant Contact served 2022-09-14; answer due 2022-10-05 (dkt. 6, filed 2022-09-19).
  • Answer deadline extended: On 2022-09-29, Constant Contact filed a notice of agreed extension (dkt. 7, by Neil McNabnay), resetting the answer deadline to 2022-11-21; Aaron P. Pirouznia appeared for Constant Contact the same day (dkt. 8).
  • Answer/counterclaims: The actual answer (expected ~2022-11-21) and any counterclaims are not in the sources I retrieved — unverified. No counterclaim activity surfaced in any tracker.

2. Pre-Trial Motions of Substance

  • Motions to dismiss / transfer / summary judgment: No specific motions in 6:22-cv-00922 were found in my searches. Judge Albright's standing orders on patent cases and pretrial procedures were entered 2022-09-16. The parallel Pedersen v. Oracle case (6:22-cv-00410) involved transfer practice before Albright, but I cannot extrapolate that to Constant Contact without a docket source.
  • Stay pending IPR: No stay order in this case was located. However, the procedural context is decisive: Unified Patents, LLC — the defensive aggregation entity that counts many of these defendants as members — filed IPR2023-00029 on the '920 patent on 2022-10-14, and a second IPR (IPR2023-00867, Oracle Corp. v. Pedersen) followed. As of 2023-08-29, a mandatory notice in IPR2023-00867 still listed the Constant Contact case as "Pending" in W.D. Tex. The near-universal practice in this Pedersen campaign was to stay the district cases pending the PTAB outcome; a stay order here is likely but unverified.

3. Claim Construction (Markman)

  • No Markman ruling was found for this case. Given that IPR2023-00029 was instituted on 2023-05-15 and the district cases in this campaign were stayed or effectively dormant pending the PTAB, it is unlikely that claim construction was reached. The PTAB applied the Phillips standard and construed no terms as dispositive — its obviousness analysis turned on where the prior art (Funk, in view of Law or Kamakura) disclosed the "messenger-specific, user-specified delivery parameters" limitation.

4. Discovery Milestones

  • No case-specific discovery milestones (e.g., claim charts, fact discovery cutoffs, expert reports, depositions) were documented in the sources retrieved. The litigation was essentially superseded by the IPR schedule: petition (2022-10-14), institution (2023-05-15), patent owner response (2023-08-09), reply (2023-11-15), oral hearing (2024), and final written decision (2024-05-10). District discovery was almost certainly stayed or minimal.

5. Trial Events, Verdict & Post-Trial Motions

  • No trial, verdict, JMOL, new-trial motion, or fee motion was found — and none is expected, because the asserted claims were invalidated at the PTAB before any trial setting matured. This segment is unverified as to formal docket entries, but the IPR outcome (below) is the operative substantive result.

6. Final Disposition / Present Posture

  • The case is listed as "Active"/"Open" as of the most recent trackers (your metadata: Active; Unified Patents NPE Litigation Portal: "Open"). I found no stipulation of dismissal, consent judgment, or Fed. R. Civ. P. 41 dismissal order for 6:22-cv-00922 in my sources — that docket entry, if it exists, is unverified.
  • Substantively, however, the case is effectively dead: the PTAB's final written decision in IPR2023-00029 (2024-05-10) held claims 1 and 14–17 of the '920 patent unpatentable as obvious, and on 2026-03-26 the Federal Circuit affirmed in a nonprecedential opinion (Pedersen v. Unified Patents, LLC, No. 2024-2090; Lourie & Hughes, JJ., and Chief District Judge Kleeh sitting by designation), finding the Board's decision supported by substantial evidence. With all asserted claims invalidated and that judgment now final, there is no enforceable claim remaining for Pedersen to assert against Constant Contact; the expected end-state is dismissal (likely with prejudice or pursuant to the parties' stipulation), but I cannot cite the specific closing order because it was not in my search results.

7. Parallel PTAB Proceedings (and Effect on Litigation)

This is the well-documented core of the case:

  • IPR2023-00029 — Unified Patents, LLC v. Pedersen (U.S. Patent 6,965,920):

    • Petition filed 2022-10-14 (expert declaration of Dr. Henry H. Houh; grounds: obviousness over Funk (U.S. 5,937,162) in view of Law (U.S. 7,058,586) or Kamakura (U.S. 6,047,310), challenging claims 1 and 14–17).
    • Institution granted 2023-05-15.
    • Patent owner response 2023-08-09 (Warner Scheyer declaration); petitioner reply 2023-11-15; oral argument 2024.
    • Final Written Decision 2024-05-10: claims 1 and 14–17 unpatentable as obvious.
    • Pedersen appealed (notice of appeal 2024-07-12; Fed. Cir. No. 2024-2090); argued by Dunlap Bennett & Ludwig (Greenspoon, Flachsbart, Magas, Dunlap) for Pedersen and Unified's in-house team (Hughes, Holtslander; earlier Haynes & Boone: Bowser, Oliver, McCarty).
    • Federal Circuit affirmed 2026-03-26 (nonprecedential), rejecting Pedersen's argument that the Board failed to locate the messenger-specific, user-specified delivery-parameter limitation in Funk. Unified Patents' campaign materials describe this as neutralizing the patent's assertion value across the entire defendant slate, including Constant Contact.

  • IPR2023-00867 — Oracle Corp. v. Pedersen (same '920 patent): filed early 2023; institution and outcome not confirmed in my sources, but its 2023-08-29 mandatory notice confirms the Constant Contact case was then pending.

  • Effect on the litigation: Unified Patents' IPR was plainly the strategic vehicle for the defendant group (Constant Contact being a Unified member-company beneficiary). The May 2024 final written decision invalidating every asserted claim, now affirmed on appeal (March 2026), deprived Pedersen of any viable infringement claim in 6:22-cv-00922. The district case's "Active" status in the trackers is a vestige; the substantive outcome is total invalidation of the patent's asserted claims.

Key Sources

Bottom line: The litigation's decisive "outcome" was not a jury verdict or a settlement — it was the PTAB's 2024-05-10 final written decision (claims 1 and 14–17 obvious), affirmed by the Federal Circuit on 2026-03-26. That invalidates the entire asserted basis of Pedersen v. Constant Contact. The district docket's formal closing entry (stay order and/or dismissal) is the one item I could not verify from public sources; a PACER check of 6:22-cv-00922 would supply the exact stay/dismissal order dates and any stipulation.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Counsel of Record for Plaintiff Peter Henrik Pedersen

Based on the available docket and firm records, the plaintiff is represented by Ramey LLP (Houston, Texas). The identified attorney is:

William P. Ramey III

  • Role: Lead counsel / attorney of record for plaintiff (Ramey LLP's managing partner)
  • Firm/Office: Ramey LLP, 5020 Montrose Blvd., Suite 8, Houston, Texas 77006
  • Experience: Managing partner of a full-service IP litigation boutique; Ramey LLP has filed a coordinated series of WDTX infringement suits for Pedersen against Constant Contact, Blackbaud, Monday.com, Wix.com, Zendesk, Oracle, Salesforce, Zoho, and others over U.S. Patent No. 6,965,920 (the "Profile Responsive Electronic Message Management System" patent). The firm's own announcement ("RAMEY LLP FILES NEW SUIT ON BEHALF OF PETER PEDERSEN") confirms Ramey LLP filed the original complaint in this matter, and the Justia docket for 6:22-cv-00922 lists William P. Ramey III as the plaintiff's represented-by attorney.
  • Sources: Justia docket for Peter Pedersen v. Constant Contact, Inc., No. 6:2022cv00922 (W.D. Tex.) (listing "Represented By: William P. Ramey, III"); Rameyfirm.com press releases.

Jacob B. Henry (related proceedings; likely co-counsel in the campaign)

  • Role: Attorney for Patent Owner Pedersen in parallel PTAB proceedings (IPR2023-00867, filed by Oracle) — not confirmed on the district court docket in the sources retrieved
  • Firm/Office: Ramey LLP, 5020 Montrose Blvd., Suite 8, Houston, Texas 77006
  • Experience: Registered patent litigator (Reg. No. 61,093); signed Pedersen's Updated Mandatory Notice in IPR2023-00867 concerning the same '920 patent. He appears throughout Pedersen's related IPR and district-court campaign, but I could not verify a notice of appearance in this specific W.D. Tex. case from the retrieved materials.
  • Source: PTAB filing, Oracle Corporation v. Pedersen, IPR2023-00867, Patent Owner's Updated Mandatory Notice (Aug. 29, 2023) (DocketAlarm copy).

Caveats

  • Docket completeness: The Justia docket snapshot I retrieved was last updated September 29, 2022, so it captures only the early phase (complaint and defendant's appearances). I could not pull the full PACER docket to confirm every pro hac vice or additional appearance (e.g., whether other Ramey LLP attorneys such as Donald Trey Mahoney or Kyril Talanov entered appearances in this case). Those names appear in Pedersen's other Ramey LLP filings (e.g., Adobe's IPR2023-00986 papers listing Ramey LLP's correspondence address), but I did not find confirmation of them on this case's docket.
  • No local counsel identified: The retrieved docket entries do not show a separate W.D. Tex. local counsel for the plaintiff distinct from Ramey LLP (which is Houston-based and within the W.D. Tex. footprint); none should be assumed.
  • Subsequent status: The case remains "Open" per Unified Patents' portal, but note that the PTAB (Unified Patents, LLC v. Pedersen, IPR2023-00867) issued a final written decision on May 10, 2024 holding all challenged claims of the '920 patent unpatentable, and there is a related Federal Circuit appeal (No. 24-2090). Those developments do not change the counsel-of-record analysis above.

Bottom line: William P. Ramey III of Ramey LLP is the confirmed attorney of record for plaintiff Pedersen; Jacob B. Henry of the same firm is his known patent counsel in the parallel IPR proceedings on the same patent but was not independently verified as appearing in this district court docket.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

Counsel of Record for Defendant Constant Contact, Inc.

Based on the available docket record for Pedersen v. Constant Contact, Inc., No. 6:22-cv-00922 (W.D. Tex., Judge Alan D. Albright), the defendant's counsel of record are:

1. Neil J. McNabnay — Lead Counsel

  • Firm/Location: Principal, Fish & Richardson P.C., 1717 Main Street, Suite 5000, Dallas, TX 75201 (also previously at DLA Piper US LLP).
  • Docket basis: Filing 7 (Sept. 29, 2022) — "Notice of Agreed Extension of Time to Respond to Plaintiff's Complaint" filed by Constant Contact, Inc. (signed by McNabnay). Justia/PACER lists him as counsel for the defendant.
  • Experience: Senior IP litigator (Texas bar 1997, Michigan Law). Long track record defending tech companies in patent suits in the Eastern District of Texas and before the Federal Circuit — e.g., obtaining dismissal/summary judgment for Subaru in MHL Tek, LLC v. Subaru of America (E.D. Tex./Fed. Cir.), favorable settlements for Travelocity/Orbitz/Expedia in the Constellation IP "customized presentation system" cases, and defense work for Citrix, Canon, Boeing, eBay and others. He also appeared for defendants in Cellspin Soft v. Fitbit (Fed. Cir. 22-2025).

2. Aaron P. Pirouznia — Counsel (Associate/Principal at time of appearance)

  • Firm/Location: Fish & Richardson P.C., 1717 Main Street, Suite 5000, Dallas, TX 75201 (T: 214-292-4073; pirouznia@fr.com).
  • Docket basis: Filing 8 (Sept. 29, 2022) — "Notice of Attorney Appearance by Aaron P. Pirouznia on behalf of Constant Contact, Inc." Justia/PACER lists him as counsel for the defendant.
  • Experience: Patent litigator at Fish & Richardson with active defendant-side patent work across districts — e.g., Route Guidance Systems LLC v. Grubhub Inc. (N.D. Ill.), Entropic Communications v. DISH Network (C.D. Cal.), NuCurrent v. Sariana (S.D. Cal.), and matters before the W.D. Tex. He frequently appears alongside McNabnay on Fish & Richardson patent defense teams (e.g., in D. Del. and W.D. Tex. cases).

Notes and caveats

  • Both attorneys are from Fish & Richardson's Dallas office and appear as counsel of record directly (no separate local counsel was noted in the docket entries retrieved; both are Texas-licensed and could appear in W.D. Tex. without pro hac vice admission).
  • No in-house counsel from Constant Contact, Inc. appears on the docket entries retrieved.
  • Source limitation: The Justia docket sheet was last retrieved September 29, 2022 and may not reflect later appearances (e.g., additional Fish & Richardson associates or local counsel added after the initial appearances). I could not verify a complete, current PACER docket in the available sources, so there may be additional counsel of record added later in the case.
  • Case posture context: The '920 patent was challenged in IPR2023-00029 (Unified Patents v. Pedersen); the PTAB invalidated the challenged claims, and on March 26, 2026 the Federal Circuit affirmed in a written opinion. The Unified Patents litigation portal still lists this district case as "Open," but the case's substantive activity appears to have been affected by the IPR. Whether the case has since been dismissed or stayed could not be confirmed from the available sources.