Vanadium LLC v. Thorlabs Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Venadium LLC (Texas)
  • Defendant: Thorlabs, Inc. (New Jersey)
  • Plaintiff’s Counsel: Zimmerman Law Group; Corcoran IP Law, PLLC
• Case Identification: 2:17-cv-07309, D.N.J., 09/20/2017
• Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendant is a New Jersey corporation with a regular and established place of business in the district.
• Core Dispute: Plaintiff alleges that Defendant’s website infringes a patent related to methods for controlling software functionality using digitally signed authorization messages.
• Technical Context: The patent addresses the field of digital rights management (DRM) for software, specifically for "shareware," using public-key cryptography to prevent unauthorized use while allowing for controlled distribution.
• Key Procedural History: No prior litigation, licensing history, or other procedural events are mentioned in the complaint.

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 Issued
2017-09-20	Complaint Filed

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

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

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

The Invention Explained

• Problem Addressed: The patent addresses the challenge of distributing software (i.e., "shareware") in a way that allows for easy dissemination but prevents unauthorized use, which undermines the software supplier's ability to be compensated (’549 Patent, col. 1:10-36, col. 2:17-24). Conventional "copy protect" mechanisms were seen as overly restrictive for legitimate users, while simple distribution lacked enforcement (’549 Patent, col. 1:31-48).
• The Patented Solution: The invention proposes a system where "protective code" embedded within the shareware controls its functionality. The software remains in a limited or inhibited state until it receives a digitally signed "authorization message" from a trusted source, such as a "billing agency" (’549 Patent, Abstract; col. 3:24-44). The shareware contains a public key that allows it to verify the digital signature on the authorization message, thereby confirming its authenticity before unlocking full functionality (’549 Patent, col. 3:39-49; FIG. 1). The system also includes an "integrity self-checking routine" to ensure the protective code itself has not been tampered with (’549 Patent, col. 4:1-17).
• Technical Importance: The described method offered a model for software monetization that combined the low-cost distribution of shareware with cryptographic security to enforce licensing terms, a key issue in the era of early internet software distribution (’549 Patent, col. 2:56-65).

Key Claims at a Glance

• The complaint asserts "one or more claims" of the patent (Compl. ¶12). Independent claim 1 is representative.
• Independent Claim 1 recites a method for protecting a computer program comprising the steps of:
  • Inhibiting a functional feature of the program from running on a user computer until it receives a digitally signed authorization message.
  • Providing the program's embedded protective code with access to a public checking key.
  • Running an integrity self-check on the computer program.
  • Communicating the authorization message to the user computer.
  • Applying the public checking key to authenticate the authorization message.
  • Enabling the functional feature if the message is authenticated and the integrity check confirms the program is in an "anticipated state."
• The complaint reserves the right to modify its infringement theories and does not limit itself to specific claims (Compl. ¶15).

III. The Accused Instrumentality

Product Identification

The accused product is Defendant's website, specifically identifying the webpage "https://www.thorlabs.com/locations.cfm" (Compl. ¶10).

Functionality and Market Context

The complaint identifies the accused product as a webpage listing the physical locations of the defendant's business (Compl. ¶10). The complaint 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). The complaint does not describe the specific technical functionality of the website or webpage alleged to be infringing, instead referencing a non-included "Exhibit B" (Compl. ¶12).

IV. Analysis of Infringement Allegations

The complaint alleges that Defendant directly infringes the ’549 Patent but does not provide a claim chart or map specific features of the accused website to the elements of any asserted claim (Compl. ¶12). It references an "Exhibit B" containing "claim charts," but this exhibit was not filed with the public complaint (Compl. ¶14-15). The narrative infringement theory is that Defendant's "making and using" of its website for commercial purposes infringes the patent (Compl. ¶12).

• Identified Points of Contention: The complaint's lack of technical detail raises fundamental questions about the plaintiff's infringement theory.
  • Scope Questions: A primary question will be whether the patent's claims, which describe a system for protecting downloadable, executable "shareware" programs, can be read to cover the operation of a public-facing informational website. The court may need to determine if a standard web browser interacting with a web server via protocols like HTTPS constitutes the claimed method. For instance, does a standard TLS/SSL certificate function as the claimed "authorization message" from a "superior authority" that "enabl[es] said functional feature to run" as recited in the claims? (’549 Patent, col. 10:1-3).
  • Technical Questions: The complaint does not identify what component of the accused website constitutes the claimed "embedded protective code" or the "integrity self-check" (’549 Patent, col. 10:48-53). A key factual question will be what evidence exists that the accused website performs a specific integrity check on its own code or inhibits functionality pending receipt of a digitally signed message in the manner described by the patent, as opposed to simply operating via standard, secure web protocols.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail to definitively identify terms for construction. However, based on the technology and the nature of the accused product, the following terms from claim 1 of the ’549 Patent may be central to the dispute.

"authorization message"

• Context and Importance: This term is the lynchpin of the claimed security method. The plaintiff's theory may depend on construing this term broadly enough to encompass standard web communications, such as data exchanged during an HTTPS handshake. Defendant may argue the patent limits the term to a specific message from a "billing agency" or "superior authority" for the express purpose of unlocking software features, not general-purpose web security (’549 Patent, col. 4:32-40; col. 7:4-9).
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims themselves do not narrowly restrict the source or format of the message, requiring only that it is "digitally signed by an authorized party" (’549 Patent, col. 10:50-52).
  • Evidence for a Narrower Interpretation: The specification repeatedly describes the message in the context of a commercial transaction involving a "billing agency" that authorizes use after certain conditions (like payment) are met, as depicted in FIG. 1 and described in the detailed description (’549 Patent, col. 3:24-44; FIG. 5). The patent also distinguishes this authorization from general network security.

"integrity self-check"

• Context and Importance: This element requires the program to verify that it has not been altered. Practitioners may focus on this term because standard websites do not typically perform the type of "integrity self-check" described in the patent, which is designed to prevent tampering with "protective code" (’549 Patent, col. 4:1-17). The viability of the infringement claim could depend on whether any function of the accused website can be shown to meet this limitation.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language requires only "running an integrity self-check... to confirm that the computer program is in an anticipated state," without specifying the mechanism (’549 Patent, col. 10:53-55). This could arguably be interpreted to cover a variety of checks.
  • Evidence for a Narrower Interpretation: The specification describes this feature as a specific countermeasure against "bypassed or overridden" protective code, suggesting a check against a "precomputed integrity reference" like a checksum (’549 Patent, col. 4:1-17). This is a more specific function than general error checking that might occur in a web application.

VI. Other Allegations

• Indirect Infringement: The complaint does not contain allegations of indirect infringement. It alleges only direct infringement under 35 U.S.C. § 271(a) (Compl. ¶12).
• Willful Infringement: The complaint alleges that Defendant will have knowledge of its infringement "since at least the date that Defendant was served with a copy of this Complaint" (Compl. ¶16). This forms a basis for alleging post-filing willfulness, but no facts are alleged to support pre-suit knowledge or willfulness.

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

This case appears to be in its earliest stages, with the complaint providing a high-level notice of the dispute without significant technical detail. The litigation will likely center on the following key questions:

1. A core issue will be one of definitional scope: Can the patent's claim terms, conceived for protecting executable "shareware" programs in a pay-to-use model (e.g., "authorization message", "integrity self-check"), be construed to read on the routine operation of a modern, secure informational website using standard protocols like HTTPS?

2. A second issue will be one of evidentiary sufficiency: Assuming a favorable claim construction, what specific evidence can the plaintiff produce to show that the accused website—a single webpage listing business locations—actually performs the specific steps of the claimed method, such as inhibiting functionality pending cryptographic authorization and performing a dedicated integrity check on its own code?