Litigation
Peter Henrik Pedersen v. J2 Global, Inc.
Filed6:21-cv-01155
- Filed
- 2021-11-09
Patents at issue (1)
Plaintiffs (1)
Defendants (1)
Summary
Infringement action listed as Pedersen v. J2 Global, Inc. et al. concerning US Patent 6,965,920; current status was not confirmed in the narrative.
Case overview & background
Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.
I'll research this case thoroughly, starting with the parties, patent, and procedural posture.
I have strong initial results. Let me dig deeper into the docket history, the dismissal, J2 Global's identity/products, and the IPR outcome.
Let me verify the accused products in the amended complaint and the IPR/Federal Circuit outcome details.
Case Overview: Pedersen v. J2 Global, Inc. (W.D. Tex., No. 6:21-cv-01155)
Parties and technology. Plaintiff Peter Henrik Pedersen is an individual inventor (sole named inventor of the patent) who runs a broad, patent-assertion campaign; Unified Patents describes him as "believed to be associated with AiPi Solutions," an assertion-entity affiliate (Unified Patents, May 10, 2024 and Mar. 26, 2026 posts). Defendants are J2 Global, Inc. and its Canadian subsidiary J2 Global Canada, Inc. J2 Global was a Los Angeles–based cloud services and digital media holding company that rebranded to Ziff Davis in October 2021, and its marketing-technology portfolio includes the email-marketing platforms Campaigner and iContact (ATDb company profile). The asserted patent is U.S. Patent No. 6,965,920, titled "Profile Responsive Electronic Message Management System," a single-patent campaign that RPX described as covering management of "electronic messages" based on a recipient profile determining "where, when and how specific types of messages from specific messengers are delivered to the recipient." Claim 1 sketches a system comprising a recipient profile application, a messenger profile application, a message input application, and an individual message generator that assembles a personalized message for delivery according to those recipient-specified delivery parameters. Per RPX's contemporaneous reporting, the J2 Global complaint targeted the defendants' mass-marketing email products (the campaign's parallel cases against Google and Microsoft targeted webmail, while J2 Global and Mailgun were accused via their email-marketing platforms). I could not independently verify from the docket sources retrieved which specific J2/Ziff Davis product name (Campaigner vs. iContact) is identified in the First Amended Complaint (Dkt. 9), so the product-level accusation should be treated as reported by RPX rather than confirmed from the pleading itself.
Procedural posture and venue. Filed November 9, 2021, in the Waco Division of the Western District of Texas, assigned to Judge Alan D. Albright — at the time the nation's busiest patent venue and the most plaintiff-friendly forum for patentees, which is why Pedersen filed his entire campaign there (UniCourt case summary; RPX, Nov. 13, 2021). J2 Global was served January 18, 2022; the defendants answered with jury demand and counterclaims on March 25, 2022 (Dkt. 7), and Pedersen filed a First Amended Complaint adding J2 Global Canada (Dkt. 9, Apr. 4, 2022). J2 Global Canada moved to dismiss the indirect-infringement claims and to strike requests for enhanced damages and injunctive relief (Dkt. 17, Apr. 25, 2022), which was resolved by stipulation withdrawing the motion and permitting another amended pleading (Dkt. 22, June 6, 2022). Judge Albright entered a scheduling order on August 4, 2022 (Dkt. 23) setting a November 1, 2022 Markman hearing and an October 18, 2023 trial date — but the case never got there: the parties filed a joint stipulation of dismissal without prejudice on August 30, 2022 (Dkt. 24), followed by a further joint stipulation of dismissal and a report to the USPTO on May 8, 2023 (Dkts. 25–26), effectively ending the case before claim construction. (UniCourt's "Pending" status reflects an April 2022 snapshot and is stale; the docket entries indicate the case concluded by stipulation in 2023.)
Why it matters. This case is the anchor of a large single-patent NPE-style campaign: Pedersen filed parallel W.D. Tex. suits in November 2021 against Alphabet/Google (6:21-cv-01152), Mailgun (6:21-cv-01153), Microsoft (6:21-cv-01154), and J2 Global (6:21-cv-01155), then expanded to Verizon/Yahoo (6:21-cv-01308), Oracle, Salesforce, Zoho, Intuit, Adobe, Wix, Zendesk, Constant Contact, Blackbaud, Monday.com, Aurea Software, and others (RPX; Unified Patents). The case's lasting significance is its IPR linkage: on October 14, 2022, Unified Patents petitioned for inter partes review (IPR2023-00029) of claims 1 and 14–17 of the '920 patent, citing the J2 Global scheduling order (ECF 23) among its exhibits on parallel litigation and Fintiv discretion. The PTAB issued a final written decision on May 10, 2024, holding all challenged claims unpatentable (obviousness over Funk and Law / Funk and Kamakura), and the Federal Circuit affirmed on March 26, 2026 (Unified Patents). Because the district court cases were dismissed before the IPR concluded, the PTAB/Federal Circuit outcome — not the Albright litigation — ultimately invalidated the patent and neutralized the campaign, illustrating the interplay between W.D. Tex. patentee-friendly venue practice and IPR-based challenges by third-party petitioners like Unified Patents.
Key legal developments & outcome
Major rulings, motions, claim construction, settlements, and the present posture or final disposition.
Pedersen v. J2 Global, Inc., No. 6:21-cv-01155 (W.D. Tex.)
Court: [U.S. District Court for the Western District of Texas, Waco Division](/courts/western-district-of-texas-waco) | Judge: Alan D. Albright | Patent: U.S. Patent No. 6,965,920 ("Profile responsive electronic message management system") | Status: Terminated (dismissed by joint stipulation; never reached trial)
Below is the chronological development, grounded in the PACER-derived docket summaries (Unicourt, Patexia) and PTAB/Federal Circuit records. Where public summaries are ambiguous, I flag it.
1. Filing & Initial Pleadings
- 2021-11-09 – Complaint filed by Peter Henrik Pedersen against J2 Global, Inc. alleging infringement of U.S. Patent No. 6,965,920 (Doc. 1; fee receipt; summons issued same day, Doc. 4). Plaintiff's counsel: William P. Ramey III (Ramey LLP).
- 2022-01-18 – J2 Global, Inc. served; answer due 2022-02-08 (Doc. 5, return filed 2022-01-20).
- 2022-02-07 – Unopposed extension of time to answer (Doc. 6).
- 2022-03-25 – Answer with jury demand and counterclaims by J2 Global, Inc. and J2 Global Canada, Inc. (Doc. 7). Defense counsel: Darryl Adams (local counsel), with pro hac vice counsel Brett M. Schuman, Kline Moore, and Natasha E. Daughtrey (Docs. 10–15, granted 2022-04-11/12). The substantive counterclaims are not detailed in the public docket summaries; they were presumably declaratory judgment (non-infringement/invalidity) claims of the type J2 asserted in parallel Pedersen litigations, but I could not confirm the exact text.
- 2022-04-04 – First Amended Complaint, adding J2 Global Canada, Inc. as a defendant (Doc. 9, with Exhibit A = US '920 patent).
2. Pre-Trial Motions of Substance
- ~2022-05 (Doc. 17) – J2 Global Canada, Inc. moved to dismiss for failure to state a claim for indirect infringement and to strike requests for enhanced damages and injunctive relief.
- 2022-05-09 – Plaintiff's notice of extension to respond (Doc. 19).
- 2022-05-23 – Plaintiff's response to the motion to dismiss (Doc. 20), attaching a proposed Second Amended Complaint, the '920 patent, and a claim chart.
- 2022-06-06 – Stipulation regarding withdrawal of the motion to dismiss and filing of an amended complaint (Doc. 22) — i.e., the parties resolved the MTD by agreement rather than by court ruling. No order on the MTD appears on the docket; the motion was effectively mooted by the stipulated withdrawal.
- No motion to transfer, no motion to stay pending IPR, and no summary judgment motion appear on the public docket. (The IPR against the '920 patent was not filed until 2022-10-14 — after this case's dismissal — so no stay issue arose here.)
- 2022-06-06/09 – Agreed motion for entry of a scheduling order (Doc. 21); denied by text order on 2022-06-09 (Judge Albright could not hold Markman the week of Oct. 19 and plaintiff's counsel had not complied with the court's standing-order formatting requirement).
- 2022-08-04 – Scheduling Order entered (Doc. 23): Markman hearing set for 2022-11-01; joinder deadline 2022-11-30; amended pleadings due 2023-02-08; dispositive motions due 2023-07-26; pretrial conference 2023-09-27; jury selection (Judge Jeffrey C. Manske) and jury trial set for 2023-10-18.
3. Claim Construction (Markman)
- A Markman hearing was scheduled for 2022-11-01 under the Aug. 4, 2022 Scheduling Order, but the case was dismissed by joint stipulation on 2022-08-30 (Doc. 24) before any claim construction briefing or hearing occurred. No claim construction order was ever issued in this case. (The same patent was later construed in Pedersen's other W.D. Tex. cases, e.g., against Adobe, whose claim construction order was later cited in IPR2023-00986 — but not in this case.)
4. Discovery Milestones
- The case was dismissed within roughly nine months of the answer, before substantive discovery. The only notable "milestones" were procedural: service (2022-01-18), the case-readiness status report (Doc. 8, ~2022-04-04), and the parties' readiness to move to a scheduling order (Docs. 21–23). No discovery disputes, depositions, or expert-stage events are reflected on the public docket before dismissal.
5. Dismissal / Final Disposition
- 2022-08-30 – Joint Stipulation of Dismissal Without Prejudice (Doc. 24). Public docket summaries do not make clear whether this dismissed the entire action or only the claims against J2 Global Canada, Inc.; the absence of any docket activity after this date (other than Judge Albright's standing-order notices of 2022-09-16) is more consistent with the whole case going off the active track. I could not confirm the exact scope from public sources.
- 2023-05-08 – Joint Stipulation of Dismissal (Doc. 25) and Report on Patent/Trademark sent to the USPTO (Doc. 26) — the case was closed on this date. The public summaries do not disclose whether the final dismissal was with or without prejudice; the earlier Doc. 24 was expressly "without prejudice."
- No trial, verdict, JMOL, new-trial motion, fee motion, judgment, or appeal occurred in the district court case. There was no finding of infringement or invalidity on the merits; the case ended by agreement.
6. Parallel PTAB Proceedings and Effect on the Litigation
- IPR2023-00029, Unified Patents, LLC v. Pedersen (petition filed 2022-10-14) – Unified Patents — whose membership includes J2 Global — challenged claims 1 and 14–17 of the '920 patent. The petition cited this very case's Scheduling Order (Ex. 1015, "Pedersen v. J2 Global Canada — Scheduling Order (ECF 23)"). Institution: 2023-05-15; Final Written Decision: 2024-05-10, holding the challenged claims unpatentable; terminated 2024-05-10. Because the J2 Global case had already been dismissed without prejudice in Aug. 2022 / May 2023, the IPR did not operate as a stay or drive a pre-institution settlement in this case — but the eventual invalidation extinguished the patent, foreclosing any refiling against J2 Global.
- Federal Circuit appeal – Pedersen v. Unified Patents, No. 24-2090 (filed 2024-07-15) – Pedersen appealed the FWD. On 2026-03-26, the Federal Circuit affirmed the PTAB's unpatentability determination (per Unified Patents' public announcement and PatSnap's PACER-based summary). The '920 patent's challenged claims are thus cancelled/confirmed unpatentable.
- Related IPRs on the same patent (other Pedersen litigations, not this case): IPR2023-00986 (Adobe Inc.) and IPR2023-00867 (Oracle Corp.) — both terminated-settled on 2023-10-11 (pre-decision settlements), consistent with Pedersen settling his parallel W.D. Tex. suits against those defendants.
- Pedersen filed a wave of additional '920 patent suits in W.D. Tex. in 2022 (e.g., against Zendesk, Constant Contact, Blackbaud, Wix, Monday.com, Adobe, Intuit, Oracle, Salesforce, Zoho, Ziff Davis, Aurea, Madwire, Upland), several of which were likewise resolved or are linked to the settled IPRs — indicating the J2 Global dismissal was part of a broader pattern of the patent being whittled down via IPR and settlements.
Bottom Line
| Stage | Outcome |
|---|---|
| Pleadings | Complaint (2021-11-09); Answer + counterclaims (2022-03-25); FAC adding J2 Global Canada (2022-04-04) |
| Key motion | J2 Global Canada's MTD re: indirect infringement/enhanced damages/injunctive relief (Doc. 17) — withdrawn by stipulation (Doc. 22, 2022-06-06) |
| Claim construction | Scheduled for 2022-11-01 but never held |
| Discovery | Minimal; no substantive disputes before dismissal |
| Disposition | Joint stipulation of dismissal w/o prejudice (2022-08-30, Doc. 24); final joint stipulation of dismissal + PTO report (2023-05-08, Docs. 25–26) |
| Trial/verdict | None |
| Parallel PTAB | IPR2023-00029 (Unified Patents): instituted 2023-05-15, FWD of unpatentability 2024-05-10, affirmed by the Federal Circuit 2026-03-26 (No. 24-2090) |
Caveats: Public docket aggregators don't disclose (a) the exact scope of the Aug. 30, 2022 vs. May 8, 2023 stipulations (full case vs. single defendant; with/without prejudice), (b) the substance of J2's counterclaims, or (c) any settlement terms. For those specifics, PACER (W.D. Tex., Case 6:21-cv-01155) would be the authoritative source; the case has no published opinion, which is why none is cited.
Plaintiff representatives
Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Ramey
- William P. Ramey III · lead counsel
Counsel of Record for Plaintiff Peter Henrik Pedersen
Based on the docket record for Pedersen v. J2 Global, Inc., No. 6:21-cv-01155 (W.D. Tex.), the plaintiff's counsel of record is William P. Ramey III — he is the only attorney shown for the plaintiff on the district-court docket (sources below). There are no appearances by separate local counsel, co-counsel, or in-house counsel reflected in the publicly available docket entries.
William P. Ramey III — Lead/Attorney of Record
- Role: Lead attorney of record for plaintiff (signed the complaint, amended pleadings, and all subsequent plaintiff filings). Ramey LLP is the plaintiff's firm; Ramey is its founding/managing partner.
- Firm & office: Ramey LLP, 5020 Montrose Blvd., Suite 800, Houston, TX 77006.
- Docket evidence: Ramey electronically filed the Complaint (Doc. 1, filed 11/09/2021), the First Amended Complaint (Doc. 9, 04/04/2022), the Case Readiness Status Report (Doc. 8), the response to defendants' motion to dismiss (Doc. 20), the agreed scheduling-order motion (Doc. 21), and the joint stipulations of dismissal (Docs. 24 and 25). Unicourt's case summary likewise lists William P. Ramey III as the sole "Plaintiff and Counter Defendant Attorney" (see unicourt.com case page for 6:21-cv-01155). No pro hac vice motions were filed by plaintiff, which is consistent with Ramey being a Texas-licensed attorney already admitted to the Western District of Texas (no local counsel needed).
- Experience: Texas-licensed IP litigator (admitted 2000); registered patent attorney (Reg. No. 44,295); named to Super Lawyers for Intellectual Property Litigation 2014–2023 (superlawyers.com profile; rameyfirm.com bio). He has prosecuted a large campaign of W.D. Tex. patent cases for Pedersen and related plaintiffs on U.S. Patent No. 6,965,920 (e.g., Pedersen v. Yahoo Inc., 6:21-cv-01308 (W.D. Tex.); suits against Blackbaud, Constant Contact, Monday.com, Wix.com, and Zendesk — see Ramey LLP's own announcement). In the parallel PTAB proceedings on the same '920 patent (IPR2023-00029 by Unified Patents; IPR2023-00867 by Oracle; IPR2023-00986 by Adobe), Ramey LLP represented Pedersen as patent owner, with Ramey serving as back-up counsel (Ramey LLP, Customer No. 63467) — see the Patent Owner's Power of Attorney and Mandatory Notices filed in IPR2023-00867 (dated June 2, 2023).
Related counsel note (PTAB only, not district court of record)
- Jacob B. Henry (Ramey LLP, same Houston office) served as lead counsel for the patent owner Pedersen in the parallel IPR proceedings on U.S. Patent No. 6,965,920 (IPR2023-00029, IPR2023-00867, IPR2023-00986), per PTAB mandatory notices. However, I found no docket evidence that Henry entered an appearance in the district court case 6:21-cv-01155; he should not be treated as counsel of record in this W.D. Tex. action absent confirmation from PACER/CM-ECF.
Caveats
- The district-court docket pages I relied on (Unicourt, Patexia) are secondary aggregations; I did not access PACER directly. If any associate at Ramey LLP or other attorney entered an appearance later, the aggregation sources do not show it — the visible docket (Docs. 1–26) consistently shows only "(Ramey, William)" on plaintiff filings.
- Case status: The case was stipulated dismissed without prejudice on 08/30/2022 (Doc. 24), and a further joint stipulation of dismissal was filed 05/08/2023 (Doc. 25), with the Report on Patent/Trademark sent to the USPTO the same day (Doc. 26). The PTAB mandatory notice in IPR2023-00867 likewise lists the W.D. Tex. action as "Dismissed 08/30/2022." So although the case metadata in this prompt says "Status: Filed," the docket shows the litigation concluded by stipulation in 2023 — which also means no further counsel appearances are anticipated.
- No filings are sealed that would affect this answer; the plaintiff's counsel information is derived from open docket entries.
Defendant representatives
Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).
- Slayden Grubert Beard
- Darryl J. Adams · local counsel
- Goodwin Procter
- Brett M. Schuman · lead counsel
- In-house counsel
- Kline Moore · out-of-state counsel
- Natasha E. Daughtrey · out-of-state counsel
Defendant Counsel of Record — Pedersen v. J2 Global, Inc., No. 6:21-cv-01155 (W.D. Tex.)
Important context up front: The case metadata says "Filed," but the W.D. Tex. docket shows the case was resolved: a joint stipulation of dismissal without prejudice (Dkt. 24, 8/30/2022), a subsequent joint stipulation of dismissal (Dkt. 25, 5/8/2023), and a Report on Patent/Trademark sent to the USPTO (Dkt. 26, 5/8/2023). All counsel below appeared during the active pendency (2022). The docket reflects appearances for both J2 Global, Inc. and added defendant J2 Global Canada, Inc. (added via First Amended Complaint, Dkt. 9, 4/4/2022). No in-house counsel appears on the docket as counsel of record.
1. Darryl J. Adams — Local Counsel
- Firm / office: Slayden Grubert Beard PLLC, 401 Congress Ave., Suite 1650, Austin, TX 78701 (shareholder).
- Docket role: Texas-licensed local counsel for both defendants. He is the attorney who appeared on Dkt. 7 (Answer with Jury Demand and Counterclaim, 3/25/2022) — the docket text expressly adds him to both J2 Global, Inc. and J2 Global Canada, Inc. He also sponsored the three pro hac vice motions (Dkts. 10–12, 4/11/2022) for the out-of-state Goodwin attorneys.
- Experience note: 25+ years in IP litigation focused on electronics/computer patents; M.S. in Electrical Engineering; former law clerk to Judge Alvin A. Schall on the Federal Circuit; regularly serves as lead/local counsel in Judge Albright's Waco division (per his firm bio and Super Lawyers profile). He also appeared for related entity Ziff Davis, Inc. in the parallel Pedersen v. Ziff Davis case in the same court.
- Sources: UniCourt docket summary of 6:21-cv-01155; sgbfirm.com/darryl-adams/; Super Lawyers profile.
2. Brett M. Schuman — Lead / Out-of-State Counsel
- Firm / office: Goodwin Procter LLP, San Francisco, CA (partner; co-chair of Goodwin's Intellectual Property Litigation practice).
- Docket role: Lead out-of-state counsel; admitted pro hac vice on behalf of J2 Global Canada, Inc. via motion at Dkt. 12 (filed 4/11/2022) and granted by Judge Albright at Dkt. 15 (4/12/2022).
- Experience note: Highly experienced patent trial lawyer; co-lead counsel for Otto Trucking in Waymo v. Uber (summary judgment victory), lead trial counsel for Rivian in Tesla v. Rivian; ~30 IPR/CBM proceedings; former chair of Goodwin's San Francisco office. (Chambers USA, Goodwin bios.)
- Sources: UniCourt docket entries 12 & 15; Chambers.com profile; Goodwin press releases (12/2014, 11/2015).
3. Kline Moore — Out-of-State Counsel
- Firm / office: Not confirmed from the sources retrieved. Given that Moore was admitted PHV alongside Schuman in the same Goodwin-led team (motion filed by Adams "on behalf of Kline Moore," Dkt. 11, granted at Dkt. 14, 4/12/2022), Moore is very likely a Goodwin Procter LLP associate — but I could not verify the firm/office from the available search results. Verify via PACER Dkt. 11 (the motion itself contains the firm address and bar number) before relying on this.
- Docket role: Out-of-state attorney admitted pro hac vice for J2 Global Canada, Inc.
- Experience note: No verifiable case history in hand; do not rely on any unsourced bio.
4. Natasha E. Daughtrey — Out-of-State Counsel
- Firm / office: Not confirmed from the sources retrieved. Same situation as Moore: PHV motion at Dkt. 10 (4/11/2022), granted at Dkt. 13 (4/12/2022), sponsored by Adams on behalf of J2 Global Canada, Inc. Likely Goodwin Procter LLP, but verify via PACER Dkt. 10 for firm address/bar number.
- Docket role: Out-of-state attorney admitted pro hac vice.
- Experience note: No verifiable case history in hand.
Notes on sourcing and gaps
- The four names above are confirmed by the UniCourt/Patexia docket reproductions (Dkts. 7, 10–15). I did not access PACER directly; firm affiliations for Moore and Daughtrey should be confirmed from the PHV motions themselves, which list each applicant's firm and bar credentials.
- Plaintiff is represented by William P. Ramey III (Houston-based plaintiff-side patent litigator; filings at Dkts. 1, 6, 8, 9, 19–21, 25).
- A related PTAB proceeding referencing this litigation (IPR2023-00029, Unified Patents) appears in Docket Navigator exhibits; if you want the IPR defense team separately, that is a different record (Goodwin also handles J2/Ziff Davis PTAB work), and I'd need to pull the IPR pleadings to confirm.
- No appearances by in-house counsel for J2 Global were found on the district-court docket.