ContactWave LLC vs. Macy’s, Inc.: Voluntary Dismissal in Messaging Patent Case

Introduction

In a case that closed without a judicial ruling on the merits, ContactWave LLC voluntarily dismissed its patent infringement action against retail giant Macy’s, Inc. with prejudice — a procedural outcome carrying significant strategic weight for patent practitioners and IP professionals alike. Filed on December 2, 2024, in the Eastern District of Texas and closed on January 9, 2026, Case No. 2:24-cv-00989 centered on U.S. Patent No. 9,531,665 B2, covering information messaging system technology. The dismissal with prejudice, entered under Federal Rule of Civil Procedure 41(a)(1)(A)(i), means ContactWave permanently relinquished its right to re-assert these claims against Macy’s. For patent attorneys monitoring assertion strategies in the messaging technology space, and for R&D teams evaluating freedom-to-operate exposure, this outcome offers instructive signals about litigation economics, venue dynamics, and the calculated risk management behind NPE-style enforcement campaigns.

Case Overview

The Parties

The Patent at Issue

The patent central to this dispute is **U.S. Patent No. 9,531,665 B2** (application number US14/618541), covering an **information messaging system**. This patent falls within the broader category of electronic communications technology — a field that encompasses SMS marketing, push notification platforms, CRM messaging integrations, and automated customer engagement systems.

The Accused Product

The accused product category was identified as an **information messaging system**, suggesting the infringement allegations targeted Macy’s customer-facing or internal communication platforms — likely digital marketing or transactional messaging infrastructure commonly deployed in enterprise retail environments.

Legal Representation

Plaintiff ContactWave LLC was represented by attorneys Benjamin Charles Deming and Isaac Phillip Rabicoff of DNL Zito and Rabicoff Law LLC.

Defendant Macy’s, Inc. retained Bryan P. Clark, Kent E. Baldauf Jr., and Michael Charles Smith of Scheef & Stone LLP (Marshall) and The Webb Law Firm PC.

The Verdict & Legal Analysis

Outcome

The court accepted and acknowledged ContactWave’s voluntary dismissal **with prejudice** of both the Lead and Member Cases pursuant to **Fed. R. Civ. P. 41(a)(1)(A)(i)**. Critically, the court ordered that **each party bear its own costs, expenses, and attorneys’ fees**. No damages were awarded. No injunctive relief was granted. All pending relief requests were denied as moot.

Verdict Cause Analysis & Legal Significance

The case was styled as a straightforward **infringement action** — no counterclaims, invalidity proceedings at PTAB, or inter partes review petitions were identified in the available record as driving factors. The dismissal with prejudice distinguishes this outcome meaningfully from a settlement-adjacent without-prejudice withdrawal: ContactWave cannot re-file these same claims against Macy’s on this patent.

The absence of a fee-shifting award — despite the with-prejudice dismissal — is notable. Under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014), courts may award attorneys’ fees in “exceptional” patent cases. The court’s “each party bears its own costs” disposition suggests either: (a) Macy’s did not move aggressively for fees, (b) the parties negotiated a clean exit, or (c) the court found insufficient basis for exceptionality. Specific motion practice on fee-shifting was not disclosed in the case record.

A **Rule 41(a)(1)(A)(i)** dismissal filed before the defendant serves an answer or motion for summary judgment can be effectuated without court order — but the **with-prejudice** designation here required court acceptance, signaling deliberate finality. This creates **claim preclusion** (res judicata) barring ContactWave from asserting U.S. Patent No. 9,531,665 B2 against Macy’s in future proceedings.

For practitioners, this outcome illustrates the tactical calculus NPEs face when defendant counsel mounts credible invalidity or non-infringement positions early in litigation. The Eastern District of Texas, while plaintiff-friendly in reputation, increasingly sees sophisticated defense teams neutralize venue advantage through early dispositive strategies.

Industry & Competitive Implications

The ContactWave v. Macy’s dismissal reflects a recognizable pattern in NPE-driven messaging technology litigation: assertion campaigns against large enterprise defendants, followed by resolution — whether through licensing, settlement, or plaintiff withdrawal — before substantive merits adjudication. Macy’s, as a Fortune 500 retailer with substantial digital infrastructure, represents the type of high-revenue defendant NPEs target for licensing leverage rather than permanent injunctive relief.

For the broader **retail and e-commerce sector**, this case signals continued NPE activity around customer communications technology — an area encompassing SMS marketing platforms, loyalty program notifications, and omnichannel messaging systems. Companies in this space should monitor the assertion lifecycle of U.S. Patent No. 9,531,665 B2 against other defendants, as NPE campaigns often involve multi-defendant strategies targeting entire industry verticals simultaneously.

The **information messaging patent landscape** remains active litigation territory. As enterprise digital communication platforms expand, the intersection of broad software patents and large commercial implementers will continue generating assertion risk. Companies should engage patent counsel for proactive portfolio monitoring and FTO clearance in communications infrastructure.

❓ FAQ

What patent was involved in ContactWave LLC v. Macy’s, Inc.?

The case involved U.S. Patent No. 9,531,665 B2 (App. No. US14/618541), covering an information messaging system technology.

Why was the case dismissed with prejudice?

ContactWave LLC filed voluntary notices of dismissal with prejudice under Fed. R. Civ. P. 41(a)(1)(A)(i). The specific commercial or legal reasons driving this decision were not disclosed in the public case record.

How does this outcome affect information messaging patent litigation?

It reinforces that NPE assertion campaigns against enterprise defendants can be resolved through plaintiff withdrawal, particularly when defense teams mount credible early-stage invalidity or non-infringement positions.