ContactWave LLC v. GrubHub Inc. — Messaging Patent Suit Dismissed With Prejudice in 106 Days
ContactWave LLC brought a patent infringement action against GrubHub Inc. in the Northern District of Illinois, asserting US9531665B2 covering an information messaging system. The parties jointly stipulated to dismiss all claims with prejudice in just 106 days — a resolution pace that suggests early settlement or commercial resolution, though terms remain confidential.
Rapid stipulated dismissal ends messaging patent dispute before discovery
ContactWave LLC filed suit against GrubHub Inc. on 21 May 2025 in the U.S. District Court for the Northern District of Illinois, asserting infringement of US9531665B2 — a patent directed to an information messaging system. GrubHub, a well-known online food ordering and delivery platform, was alleged to have deployed functionality that falls within the scope of the asserted patent. The case was assigned Case No. 1:25-cv-05723 and defended by Fish & Richardson LLP, a firm with deep patent litigation experience.
The case terminated on 4 September 2025 — just 106 days after filing — when both parties jointly stipulated to dismiss pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii). Critically, all of ContactWave’s claims against GrubHub were dismissed with prejudice, meaning ContactWave is permanently barred from re-filing the same infringement claims against GrubHub on this patent. GrubHub’s counterclaims were dismissed without prejudice, preserving GrubHub’s ability to reassert them if needed. Each party bears its own fees and costs.
A 106-day lifespan ending in a with-prejudice dismissal by stipulation is consistent with an out-of-court settlement or licence agreement, though no financial terms are visible in the public record. The asymmetric dismissal structure — plaintiff’s claims out with prejudice, defendant’s counterclaims out without prejudice — is a standard settlement architecture that protects the defendant’s options while giving the plaintiff finality. What drove the resolution, including any licence payment, remains unknown from public filings.
Filing to Case Dismissed in 106 days
106 days — faster than the median N.D. Illinois patent case, suggesting early resolution
Stipulated dismissal with prejudice: what the ruling means for both parties
Rule 41(a)(1)(A)(ii): joint stipulation ends the case instantly
A stipulated dismissal under FRCP 41(a)(1)(A)(ii) requires agreement from all parties who have appeared and takes effect upon filing — no court order needed. This is the most common mechanism for resolving patent cases by settlement. The with-prejudice designation on plaintiff’s claims is the operative legal consequence: it carries res judicata effect, permanently foreclosing ContactWave from reasserting these infringement claims against GrubHub on US9531665B2.
Permanent bar on re-filingContactWave exits with prejudice — enforcement avenue against GrubHub closed
By agreeing to a with-prejudice dismissal of its own claims, ContactWave permanently surrenders its right to re-litigate this infringement action against GrubHub on US9531665B2. This is typical where a licence or lump-sum payment has been secured — the patentee accepts finality in exchange for consideration. However, the public record is silent on any compensation received. ContactWave retains the right to assert US9531665B2 against other defendants.
GrubHub enforcement closedGrubHub’s counterclaims preserved without prejudice — strategic optionality retained
GrubHub’s counterclaims — which may have included invalidity or non-infringement declaratory claims — were dismissed without prejudice, meaning GrubHub can potentially reassert them in future proceedings if ContactWave takes further action. This asymmetric structure is a hallmark of negotiated settlements: the plaintiff gets finality on its claims; the defendant retains a sword. Fish & Richardson’s involvement suggests aggressive early case strategy likely contributed to the rapid resolution.
Counterclaims preservedMessaging IP remains live — other platforms should monitor US9531665B2
The dismissal resolves only the GrubHub dispute. US9531665B2 remains in force and ContactWave retains enforcement rights against the broader market. Any online platform using consumer-facing notification or messaging infrastructure — particularly in food delivery, e-commerce, or marketplace verticals — should assess exposure to this patent. The 106-day resolution pace suggests ContactWave’s enforcement model may target rapid, early settlements across multiple defendants.
Patent remains enforceableFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | ContactWave LLC | Company | Patent assertion entity — holder of US9531665B2, information messaging system technologySearch in Eureka ↗ |
| Defendant | GrubHub Inc. | Company | GrubHub Inc. — online food ordering and delivery platform, Chicago-headquarteredSearch in Eureka ↗ |
| Plaintiff counsel | Isaac Philip Rabicoff | Attorney | Counsel for ContactWave LLCSearch in Eureka ↗ |
| Plaintiff law firm | Rabicoff Law LLC | Law Firm | Representing ContactWave LLCSearch in Eureka ↗ |
| Defendant counsel | Louis E. Fogel | Attorney | Counsel for GrubHub Inc.Search in Eureka ↗ |
| Defendant counsel | Neil J. Mcnabnay | Attorney | Counsel for GrubHub Inc.Search in Eureka ↗ |
| Defendant counsel | Ricardo J. Bonilla | Attorney | Counsel for GrubHub Inc.Search in Eureka ↗ |
| Defendant law firm | Fish & Richardson LLP | Law Firm | Representing GrubHub Inc.Search in Eureka ↗ |
| Presiding judge | Judge N/A | Judge | Illinois Northern District CourtSearch in Eureka ↗ |
Official order — verbatim text
The stipulation’s asymmetric structure — plaintiff’s claims out with prejudice, defendant’s counterclaims out without prejudice — is legally precise and commercially deliberate. The with-prejudice designation on ContactWave’s claims carries full res judicata effect under Seventh Circuit precedent, permanently barring re-litigation of these specific infringement claims against GrubHub. The preservation of GrubHub’s counterclaims without prejudice is a standard negotiating concession that costs the plaintiff little while giving the defendant ongoing leverage. The mutual cost-bearing clause removes any fee-shifting risk under 35 U.S.C. § 285.
US9531665B2 — Information Messaging System
US9531665B2, issued from U.S. application No. 14/618,541, covers an information messaging system — broadly, a method or apparatus for routing and delivering targeted messages to end users through a digital platform. The patent operates in the consumer notification and communication technology space, relevant to any platform that sends order confirmations, status updates, promotional messages, or user alerts via structured messaging infrastructure. Its application to food delivery platforms relates to the real-time consumer communication layer central to their service model.
Information messaging patents occupy a strategically contested zone: they are broad enough to touch nearly any consumer-facing digital platform, yet narrow enough to survive initial validity scrutiny. For food delivery, marketplace, and e-commerce operators, this patent represents the type of asset that non-practising entities deploy in portfolio-level enforcement campaigns. The breadth of potential defendants — any platform with a consumer messaging layer — means the commercial risk extends well beyond GrubHub and warrants proactive FTO analysis by platform IP teams.
Should your platform run an FTO against US9531665B2?
Any company operating a consumer-facing digital platform with messaging, notification, or alert functionality should assess whether its implementation falls within the scope of US9531665B2. This is particularly relevant for food delivery services, ride-hailing platforms, e-commerce marketplaces, and SaaS products that deliver real-time status communications to end users. The GrubHub resolution — however it was structured commercially — does not provide immunity to other operators, and ContactWave retains full enforcement rights.
PatSnap Eureka’s FTO Search Agent can map the claim scope of US9531665B2 against your product’s messaging architecture, identify prior art that may support an invalidity position, and surface any continuation or related applications that could generate follow-on risk. For in-house IP teams at platform companies, running this analysis before receiving a demand letter is materially cheaper than responding to litigation — particularly given the rapid case timelines seen in this matter.
Run a freedom-to-operate analysis on US9531665B2 to assess your product’s exposure
Run FTO in Eureka →Similar messaging and notification patent cases in N.D. Illinois
Cases involving information messaging and consumer notification patents asserted in the Northern District of Illinois against digital platform defendants.
What this case signals for the messaging and delivery platform IP landscape
A rapid with-prejudice dismissal in a messaging patent case against a major food delivery platform carries clear signals for the sector.
With-prejudice exit is the fingerprint of a settlement, not a defence win
When a plaintiff voluntarily dismisses with prejudice this quickly, it almost always reflects a negotiated outcome — licence, lump sum, or covenant not to sue. GrubHub’s legal team secured a clean exit on the infringement claims while preserving counterclaim optionality. Platform operators facing similar assertions should note that early, well-resourced defence typically accelerates resolution on favourable terms.
US9531665B2 is still live — other delivery and marketplace platforms face exposure
The GrubHub resolution does not extinguish the patent. ContactWave can and may bring identical claims against DoorDash, Uber Eats, or any other platform deploying comparable messaging infrastructure. The 106-day case lifecycle is consistent with a serial enforcement campaign designed to generate rapid licence fees before defendants mount a full invalidity challenge.
ContactWave v GrubHub — key questions answered
It means ContactWave is permanently barred from refiling the same patent infringement claims against GrubHub based on US9531665B2. The dismissal with prejudice carries res judicata effect, giving GrubHub a complete defence if ContactWave attempts to re-litigate the same claims in any future proceeding.
A without-prejudice dismissal of counterclaims is a standard element of patent settlement architecture. It preserves GrubHub’s ability to reassert invalidity or non-infringement claims if ContactWave takes any further adverse action, such as asserting the patent against a GrubHub affiliate or attempting to circumvent the dismissal. It costs the plaintiff little to concede this while giving the defendant ongoing leverage.
Yes. The dismissal resolves only the dispute between ContactWave and GrubHub. US9531665B2 remains in force and ContactWave retains full rights to assert it against other parties. Companies operating consumer-facing messaging infrastructure in food delivery, e-commerce, or marketplace sectors should conduct FTO analysis against this patent.
The mutual cost-bearing clause forecloses any claim for attorneys’ fees under 35 U.S.C. § 285, which requires a finding that the case is ‘exceptional.’ By agreeing each party bears its own fees, both sides avoid the risk and cost of a fee motion. This is standard in negotiated patent dismissals and is consistent with a case resolved by licence or settlement rather than adjudication on the merits.
FRCP 41(a)(1)(A)(ii) allows a plaintiff to dismiss an action by filing a stipulation signed by all parties who have appeared. It takes effect immediately upon filing without requiring court approval, making it the most efficient mechanism for resolving a case by settlement. Its use here — rather than a court-ordered dismissal — confirms the resolution was mutually agreed and executed without judicial intervention.
PatSnap Eureka searches patents and litigation data to answer instantly.