Vanadium LLC v. DataMotion Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Venadium LLC (Texas)
  • Defendant: DataMotion, Inc. (New Jersey)
  • Plaintiff’s Counsel: Zimmerman Law Group
• Case Identification: 2:17-cv-07306, D.N.J., 09/20/2017
• Venue Allegations: Venue is alleged to be proper based on Defendant having a regular and established place of business in the District of New Jersey.
• Core Dispute: Plaintiff alleges that Defendant’s website infringes a patent related to methods for protecting computer software from unauthorized use via digitally signed authorization messages.
• Technical Context: The technology addresses digital rights management (DRM) for software, particularly in "shareware" distribution models, by using public-key cryptography to control program functionality based on authenticated messages from a supplier or billing agent.
• 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

Date	Event
1997-10-30	U.S. Patent No. 6,330,549 Priority Date
2001-12-11	U.S. Patent No. 6,330,549 Issue Date
2017-09-20	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

• Patent Identification: U.S. Patent No. 6,330,549, "Protected Shareware", issued December 11, 2001 (the "’549 Patent").

U.S. Patent No. 6,330,549 - "Protected Shareware"

The Invention Explained

• Problem Addressed: The patent describes the challenge of preventing unauthorized use of software, especially programs distributed informally as "shareware," without resorting to physical "dongles" or cumbersome encryption that requires all users to have a key. (’549 Patent, col. 1:11-2:24).
• The Patented Solution: The invention proposes embedding "protective code" within a software program that controls its functionality. This code communicates with a trusted source (e.g., a billing agency) and will only enable certain features after receiving a valid "authorization message." The message's authenticity is verified because it is digitally signed using a secret key held by the trusted source, and the software program itself contains the corresponding public key to check the signature. (’549 Patent, Abstract; col. 2:39-56). The system is illustrated in FIG. 1, which shows a "Protected Program" on a user's computer receiving signed authorization from a "Billing Computer" which in turn communicates with a central "Billing Agency." (’549 Patent, FIG. 1).
• Technical Importance: This system provides a flexible, software-based method for enforcing licensing terms (e.g., trial periods, paid upgrades) that can be integrated directly into a program, aligning with the "try-before-you-buy" ethos of shareware while creating a mechanism for monetization. (’549 Patent, col. 4:41-60).

Key Claims at a Glance

• The complaint alleges infringement of "one or more claims" without specifying which ones (Compl. ¶9). Independent claim 1 is representative of the core invention.
• The essential elements of independent claim 1 include:
  • inhibiting at least one functional feature of a computer program from running on a user computer until it receives an authorization message digitally signed by an authorized party;
  • providing the program's protective code with access to a public checking key;
  • running an integrity self-check to confirm the program is in an "anticipated state";
  • communicating the authorization message to the user computer;
  • applying the public key to authenticate the message; and
  • enabling the functional feature if the message is authenticated and the integrity check passes.
• The complaint reserves the right to modify its infringement theories as discovery progresses (Compl. ¶15).

III. The Accused Instrumentality

Product Identification

• The accused product is identified as Defendant's website, "https://www.datamotion.com/" (Compl. ¶10).

Functionality and Market Context

• The complaint broadly alleges that Defendant infringes by "making and using (including testing) its Accused Product with the sales and offering for sale of its products and services" (Compl. ¶12). It further states that Plaintiff's infringement theory would be understood by a person of ordinary skill upon review of the complaint, the patent, and an "Exhibit B" (Compl. ¶14). However, Exhibit B was not attached to the publicly filed complaint, and the complaint itself provides no specific details about the technical operation of the accused website or its services.

IV. Analysis of Infringement Allegations

The complaint references an "Exhibit B" containing information to support its infringement allegations but does not include the exhibit itself (Compl. ¶¶12, 14). The complaint’s narrative theory is that Defendant’s website, through its sales and service offerings, directly infringes one or more claims of the ’549 patent (Compl. ¶12). Without the referenced exhibit or more detailed factual allegations, a specific element-by-element analysis based on the complaint is not possible.

No probative visual evidence provided in complaint.

• Identified Points of Contention: Based on the high-level allegations and the patent's technology, the dispute may focus on several key questions:
  • Scope Questions: A central question may be whether the patent's claims, which describe protecting a "computer program" running on a "user computer," can be construed to cover the operation of a modern, server-based website and its associated services. The parties may dispute whether a remote server providing a service constitutes the "user computer" contemplated by the patent.
  • Technical Questions: A key factual dispute will likely be whether the accused website's authentication or licensing system performs the specific functions required by the claims. For example, a court may need to determine if the accused system uses a "digitally signed" "authorization message" as claimed, or if it uses a different security or authentication method. Further, the complaint provides no evidence that the accused website performs an "integrity self-check" on its own code as required by claim 1.

V. Key Claim Terms for Construction

• The Term: "authorization message"

• Context and Importance: This term is central to the claimed invention, as it is the mechanism that "unlocks" protected functionality. Practitioners may focus on this term because the validity of the infringement claim depends on whether the accused website's system for user authentication or service enablement can be characterized as transmitting a digitally signed "authorization message" as taught in the patent.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent describes the message in functional terms as something that "authorizes the user's computer 12 to execute any of the protected code of the program 11" (col. 6:31-33), which could support arguing that any data transmission achieving this result meets the definition.
  • Evidence for a Narrower Interpretation: The patent repeatedly and explicitly requires the message to be "digitally signed" by a trusted party using a secret key, with the program using a public key to authenticate it (col. 2:44-49; col. 8:51-56). This specific cryptographic requirement could support a narrower construction that excludes other forms of authentication like simple password verification.

• The Term: "integrity self-check"

• Context and Importance: This limitation requires the protected program to verify its own integrity to prevent tampering. This term's construction is important because it represents a specific anti-hacking measure that must be present in the accused system.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The patent suggests this could be done in various ways, such as "computing a sum over the existing version of the program code at more or less randomly selected times" (col. 4:9-12). This language suggests flexibility in implementation.
  • Evidence for a Narrower Interpretation: The patent describes the check as a way to confirm the program is in an "anticipated state" and has not been "altered," and links its failure to the triggering of "predetermined countermeasures" (col. 4:1-9; claim 1). This could be interpreted to require a specific, active process of code verification, not merely a standard error-checking routine.

VI. Other Allegations

• Indirect Infringement: The complaint alleges only "Direct Infringement" in Count I and does not plead facts to support claims of induced or contributory infringement (Compl. p. 2).
• Willful Infringement: The complaint asserts that Defendant has had knowledge of its infringement "at least the date that Defendant was served with a copy of this Complaint" (Compl. ¶16). This allegation, if proven, could support a claim for post-suit willfulness but does not establish pre-suit knowledge.

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

1. Evidentiary Sufficiency: The primary question is one of evidence. Can the Plaintiff produce evidence, which is absent from the complaint, showing that the accused DataMotion website actually performs the specific technical steps of the asserted claims, including the use of digitally signed authorization messages and the execution of an integrity self-check?
2. Definitional Scope: A core legal issue will be whether the claim term "computer program" running on a "user computer", which the patent describes in the context of a standalone application, can be construed to read on the distributed, server-client architecture of a modern commercial website.
3. Technological Mismatch: The case may turn on a question of functional operation. Does the accused website’s security and user authentication protocol operate in a manner equivalent to the specific cryptographic "protected shareware" model claimed in the patent, or does it represent a distinct and non-infringing technology?