DCT
2:17-cv-07308
Vanadium LLC v. Public Service Enterprises Group Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Venadium LLC (Texas)
- Defendant: Public Service Enterprise Group, Inc. (New Jersey)
- Plaintiff’s Counsel: Zimmerman Law Group; Corcoran IP Law, PLLC
- Case Identification: 2:17-cv-07308, D.N.J., 09/20/2017
- Venue Allegations: Venue is asserted based on Defendant being a New Jersey corporation with a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s corporate website infringes a patent related to methods for controlling the use of computer software via digitally signed authorization messages.
- Technical Context: The patent addresses technology for monetizing and preventing unauthorized use of "shareware" or other distributable software, a significant challenge during the rise of digital distribution.
- Key Procedural History: The complaint alleges Defendant has known of the infringement since the date of service of the complaint, which may form the basis for a post-suit willfulness claim. No other procedural events are mentioned.
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
U.S. Patent No. 6,330,549 - “Protected Shareware”
The Invention Explained
- Problem Addressed: The patent identifies a need for a cost-effective way for software suppliers to protect their programs against unauthorized use, particularly in a "shareware" distribution model where programs are informally shared. The background notes that traditional methods like physical "dongles" or encryption requiring a universal key are either inconvenient for legitimate users or insecure. (U.S. Patent No. 6,330,549, col. 1:11-36, 2:1-17).
- The Patented Solution: The invention proposes a system where "protective code" embedded within the software controls its functionality. This code enables or disables features based on digitally signed "authorization messages" received from a trusted source, such as a billing agency. The software contains a public key to verify the signature on these messages, ensuring their authenticity before granting the user access to protected functionality. (’549 Patent, Abstract; col. 2:38-56). The system is designed to manage functionality without requiring physical security measures or distributing multiple versions of the software. (’549 Patent, col. 3:15-24).
- Technical Importance: This approach provided a flexible, software-based framework for implementing business models like free trials or tiered-feature access, aiming to enforce compensation for software that could be freely distributed. (’549 Patent, col. 2:18-29).
Key Claims at a Glance
- The complaint asserts "one or more claims" of the ’549 Patent without specifying which. (Compl. ¶9). Independent claim 1 is representative.
- Independent Claim 1: A method for protecting a computer program, comprising the essential steps of:
- Inhibiting at least one functional feature of the program from running on a user computer until an authorization message is received.
- The authorization message is digitally signed by an authorized party using a secret signing key.
- Providing the program's embedded protective code with access to the corresponding public checking key.
- Running an integrity self-check on the computer program to confirm it is in an "anticipated state."
- Communicating the authorization message to the user computer.
- Applying the public checking key to the message to authenticate it.
- Enabling the functional feature to run if the message is authenticated and the integrity check passes.
- The complaint reserves the right to modify its infringement theories and assert other claims as discovery progresses. (Compl. ¶15).
III. The Accused Instrumentality
Product Identification
- The accused instrumentality is Defendant's website, identified by the URL
https://www.pseg.com/home/index.jsp. (Compl. ¶10).
Functionality and Market Context
- The complaint identifies the accused product only as Defendant's website. (Compl. ¶10). It is the corporate website for Public Service Enterprise Group, Inc., a public utility holding company. The complaint does not contain allegations describing the specific technical functions of the website that are alleged to infringe, nor does it provide details regarding the website's commercial importance beyond its use in Defendant's business. (Compl. ¶12).
IV. Analysis of Infringement Allegations
The complaint does not provide a claim chart exhibit. The following table summarizes the infringement theory for a representative claim based on the general allegations in the complaint.
’549 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) inhibiting via the embedded protective code at least one functional feature of the computer program from running on a user computer until the user computer receives an authorization message... | The complaint alleges that the Accused Product infringes one or more claims, which suggests it performs the function of inhibiting a software feature pending authorization. | ¶12 | col. 10:50-55 |
| ...that is digitally signed by an authorized party using a secret signing key, the secret signing key being associated with a public checking key; | The Accused Product is alleged to utilize a system involving digitally signed messages to control functionality. | ¶12 | col. 10:55-58 |
| (b) providing the embedded protective code with access to the public checking key; | The Accused Product is alleged to provide access to a public key for message authentication. | ¶12 | col. 10:59-60 |
| (c) running an integrity self-check over the computer program to confirm that the computer program is in an anticipated state... | The Accused Product is alleged to perform an integrity self-check as part of its operation. | ¶12 | col. 10:61-64 |
| (d) communicating the authorization message to the user computer; | The Accused Product is alleged to communicate an authorization message to a user's system. | ¶12 | col. 10:65-66 |
| (e) applying the public checking key to the authorization message for authenticating it; and | The Accused Product is alleged to use the public key to authenticate the received message. | ¶12 | col. 11:1-2 |
| (f) enabling said functional feature to run on the user computer if the authorization message is authenticated and if the integrity self-check result confirms that the computer program is in the anticipated state. | The Accused Product is alleged to enable the previously inhibited feature upon successful authentication and integrity confirmation. | ¶12 | col. 11:3-7 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "computer program," as described in the patent in the context of distributable "shareware," can be construed to read on a server-side web application like the accused website. (’549 Patent, col. 1:11-15, 1:50-52). The claim requires inhibiting a feature from "running on a user computer," which raises the question of whether this limitation is met by a server-side process that controls what content is delivered to a user's browser. (col. 10:52-53).
- Technical Questions: The complaint does not specify what "functional feature" of the website is "inhibited" and later "enabled," what constitutes the "authorization message," or how such a message is "digitally signed." (Compl. ¶12). A key factual dispute will likely concern whether the accused website performs these specific technical steps, as opposed to employing a more conventional user authentication or content management system. No probative visual evidence provided in complaint.
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for a definitive analysis, but based on the technology and the accused product, the following terms may be critical.
The Term: "computer program"
Context and Importance: The resolution of this term's scope appears fundamental to the case. Practitioners may focus on this term because the patent specification consistently frames the invention in the context of "shareware" and "executable computer programs" installed on a user's machine, whereas the accused product is a website.
Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The patent title is "Protected Shareware," and the background repeatedly refers to "executable computer programs" and the "shareware distribution model," suggesting the invention is directed to client-side applications. (’549 Patent, Title; col. 1:7-9, 1:50-52).
- Evidence for a Broader Interpretation: The claims themselves use the general term "computer program" without an explicit limitation to "shareware" or "executable" files, which a party could argue covers a broader range of software, including server-side applications. (col. 10:45).
The Term: "inhibiting ... at least one functional feature ... from running on a user computer"
Context and Importance: This term is critical for defining the infringing act. The dispute may turn on whether a server not sending certain data to a browser is equivalent to "inhibiting" a feature from "running on a user computer," as the patent seems to describe a program already present on the user's computer whose functions are locally disabled.
Intrinsic Evidence for Interpretation:
- Evidence for a Narrower Interpretation: The patent describes a system where the "protected program 11" resides on "user A's computer 11" and contains both "basic functionality" and "extended functionality," the latter of which is inhibited until authorized. (’549 Patent, FIG. 1, FIG. 3). This suggests a local, client-side control mechanism.
- Evidence for a Broader Interpretation: A party might argue that if a feature is ultimately executed or rendered in a browser on the user's computer (e.g., via JavaScript), then preventing that code from being sent by the server constitutes "inhibiting" it from "running on a user computer."
VI. Other Allegations
- Willful Infringement: The complaint does not use the term "willful." It does allege that Defendant has known that its product infringes "since at least the date that Defendant was served with a copy of this Complaint." (Compl. ¶16). This allegation could support a claim for enhanced damages based only on post-suit conduct, as no facts supporting pre-suit knowledge are alleged. The prayer for relief requests a finding that the case is exceptional under 35 U.S.C. § 285. (Compl., Prayer for Relief ¶D).
VII. Analyst’s Conclusion: Key Questions for the Case
Definitional Scope: Can the patent’s claims, rooted in the specification’s context of protecting executable "shareware" installed on a "user computer," be plausibly construed to cover the operation of a server-side corporate website that delivers content to a user's browser?
Factual Sufficiency: Given the complaint’s lack of specific technical detail, a primary question will be whether discovery can produce evidence that the accused website actually performs the specific, multi-step method of the claims, including the use of a digitally signed "authorization message" to unlock an "inhibited" feature, as distinct from standard web authentication protocols.