Gatekeeper Solutions Inc v. Threattrack Security Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Gatekeeper Solutions Inc. (New York)
  • Defendant: ThreatTrack Security, Inc. (Florida) and Ziff Davis, Inc. (Delaware)
  • Plaintiff’s Counsel: Ramey LLP
• Case Identification: 6:23-cv-00522, W.D. Tex., 07/21/2023
• Venue Allegations: Venue is alleged based on Defendants having regular and established places of business within the Western District of Texas.
• Core Dispute: Plaintiff alleges that Defendant’s VIPRE Safesend email security product infringes a patent related to a system for controlling the distribution of electronic communications by detecting and preventing sending to inappropriate or conflicting recipients.
• Technical Context: The technology operates in the email and digital communication security field, addressing the risk of misdirected communications containing sensitive, privileged, or confidential information.
• Key Procedural History: The complaint does not mention any prior litigation, inter partes review (IPR) proceedings, or specific licensing history related to the patent-in-suit.

Case Timeline

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

U.S. Patent No. 9,032,038 - "Recipient control system for ensuring non-conflicting and comprehensive distribution of digital information and method thereof"

• Patent Identification: U.S. Patent No. 9,032,038, "Recipient control system for ensuring non-conflicting and comprehensive distribution of digital information and method thereof," issued May 12, 2015.

The Invention Explained

• Problem Addressed: The patent addresses the risk of sending electronic communications, such as emails, to unintended recipients, particularly when the information is privileged or sensitive. This includes scenarios like sending information to opposing parties in a lawsuit, competing businesses, or simply making errors due to features like email address auto-completion. (’038 Patent, col. 1:16-53).
• The Patented Solution: The invention is a system that intercepts an outgoing electronic communication and inspects the list of recipients against a set of predefined parameters or rules. If the system detects a "conflicting recipient" (e.g., two recipients who should not be on the same communication) or a "missing intended recipient" from a predefined group, it stops the communication from being sent and notifies the user, who may be given an option to override the block. (’038 Patent, Abstract; col. 2:32-54; Fig. 1).
• Technical Importance: The technology provides a rule-based gatekeeping function for electronic communications that goes beyond simple block lists to manage complex relationship-based conflicts, aiming to prevent costly or damaging disclosures of information. (’038 Patent, col. 1:40-53).

Key Claims at a Glance

• The complaint asserts at least independent claim 7. (Compl. ¶18).
• Claim 7 is a system claim comprising the following essential elements, which are drafted in a means-plus-function format under 35 U.S.C. § 112(f):
  • means for receiving one or more parameters identifying conditions for an inappropriate recipient
  • means for storing said parameters
  • means for comparing each recipient of said electronic communication with said parameters to determine whether a recipient is an inappropriate recipient
  • means for stopping the sending of the electronic communication when at least one inappropriate recipient is determined
  • means for notifying the user of each inappropriate recipient
  • means for sending the electronic communication when no inappropriate recipient is determined
• The complaint reserves the right to assert additional claims. (Compl. ¶24).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is ThreatTrack's "VIPRE Safesend product." (Compl. ¶16).

Functionality and Market Context

• The complaint identifies VIPRE Safesend as an email security software product for Outlook. (Compl. ¶16). It alleges the product is made available to businesses and individuals throughout the United States. (Compl. ¶22). The complaint does not describe the specific technical functionality of the product beyond what is implied by the infringement allegations.

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Products infringe at least claim 7 of the ’038 Patent. (Compl. ¶18). It states that an attached claim chart in "Exhibit B" describes how the elements of claim 7 are infringed. (Compl. ¶24). However, Exhibit B was not included with the filed complaint document. The body of the complaint itself does not contain specific factual allegations mapping features of the VIPRE Safesend product to the individual limitations of claim 7.

• Identified Points of Contention:
  • Scope Questions (Means-Plus-Function): As claim 7 is composed entirely of means-plus-function limitations, the central dispute will be governed by 35 U.S.C. § 112(f). The analysis will require the court to first identify the corresponding structures (i.e., specific algorithms or software modules) disclosed in the ’038 Patent's specification for performing the claimed functions (e.g., "comparing," "stopping"), and then determine whether the accused VIPRE Safesend product contains structures that are identical or equivalent.
  • Technical Questions: A key factual question will be what evidence demonstrates that the accused product performs the claimed function of "comparing each recipient... with said parameters to determine whether a recipient is an inappropriate recipient." (Compl. ¶18; ’038 Patent, col. 16:53-56). The case may turn on whether the rules engine in VIPRE Safesend operates in a way that is structurally equivalent to the conflict-detection logic described in the patent.

No probative visual evidence provided in complaint.

V. Key Claim Terms for Construction

The Term: "inappropriate recipient"

• Context and Importance: This term appears in asserted claim 7 and is foundational to the patent's purpose. The definition of what constitutes an "inappropriate recipient" will dictate the scope of infringement, as it defines the trigger condition for the system's core functionality. Practitioners may focus on this term because its construction will determine what types of user-defined rules within the accused product could be considered infringing.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests a broad range of conditions, stating "Conflicting recipients may be competitors, an insurer and the insured, management and staff, parties involved in medical care who have differing interests, opposing parties in a lawsuit, etc." (’038 Patent, col. 2:38-41). This language could support a construction that covers a wide variety of relationship-based rules.
  • Evidence for a Narrower Interpretation: A party could argue for a narrower construction limited to the specific examples and embodiments disclosed, such as conflicts based on "a portion of an email address" or "a portion of a phone number." (’038 Patent, col. 2:41-44). The patent also provides specific examples like conflicts between different company domains (e.g., "@company1.com" and "@company2.com"). (’038 Patent, col. 5:11-19).

The Term: "means for stopping the sending of the electronic communication"

• Context and Importance: This is a representative means-plus-function limitation from claim 7. Its construction is critical because, under § 112(f), its scope is not limitless but is confined to the specific "structure, material, or acts" described in the specification and their equivalents. The infringement analysis for every element of claim 7 will depend on this type of construction.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation (Equivalents): A patentee would argue that any software logic that intercepts a "send" command and prevents message transmission upon a negative rule check is an equivalent structure.
  • Evidence for a Narrower Interpretation (Specific Structure): The specification discloses a specific corresponding structure in its flowcharts. For example, Figure 1 shows a process where a "Conflict?" check (106) leads to a "Send notification" step (110) and a "Do not send" outcome (118) if the user does not override. A defendant might argue the claim is limited to a structure that implements this specific sequence of logical steps. (’038 Patent, Fig. 1).

VI. Other Allegations

• Indirect Infringement: The complaint alleges active inducement, stating Defendant knowingly induced its customers to infringe. It also alleges contributory infringement by supplying a material part of an infringing system that is not a staple article of commerce. (Compl. ¶19).
• Willful Infringement: The complaint alleges that Defendants "have made no attempt to design around the claims" and "did not have a reasonable basis for believing that the claims of the '038 Patent were invalid." (Compl. ¶¶20-21). The allegations do not assert pre-suit knowledge of the patent, suggesting the willfulness claim may primarily rely on conduct occurring after the filing of the complaint.

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

• A central issue will be one of claim scope under § 112(f): Because the asserted claim is drafted entirely in means-plus-function format, the litigation will likely focus on identifying the specific algorithms disclosed in the '038 patent's specification and then determining whether the software architecture of the accused VIPRE Safesend product contains legally equivalent structures for performing the claimed functions.
• A second core issue will be definitional construction: The outcome may depend on how the court construes the term "inappropriate recipient." The key question is whether the term covers any user-configurable email rule, or if it is limited to the specific types of relationship-based "conflicts" (e.g., competing domains, adversarial parties) that are described in the patent's detailed embodiments.
• A key evidentiary question will be one of technical mapping: Given the lack of specific infringement allegations in the complaint document itself, a threshold issue will be whether Plaintiff can produce discovery evidence sufficient to demonstrate that the accused product's actual operation—specifically, its rule-checking and message-blocking logic—maps onto the structural and functional requirements of the asserted claims as construed by the court.