Venadium LLC v. Promega Corp

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Venadium LLC (Texas)
  • Defendant: Promega Corporation (Wisconsin)
  • Plaintiff’s Counsel: Media Litigation Firm, P.C.
• Case Identification: 3:17-cv-00885, W.D. Wis., 11/20/2017
• Venue Allegations: Venue is alleged to be proper based on Defendant's regular and established place of business within the Western District of Wisconsin.
• Core Dispute: Plaintiff alleges that Defendant’s commercial website infringes a patent related to methods for controlling software functionality, commonly known as a digital rights management (DRM) or "protected shareware" system.
• Technical Context: The technology concerns systems for distributing software that can be freely copied but whose advanced features are disabled until a user receives a cryptographically secure authorization message, typically after payment.
• 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

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
2017-11-20	Complaint Filing Date

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

U.S. Patent No. 6,330,549 - "Protected Shareware" (issued Dec. 11, 2001)

The Invention Explained

• Problem Addressed: The patent addresses the difficulty software suppliers face in getting paid for "shareware"—software that is distributed informally and without restriction—because there is no built-in mechanism to enforce payment for use (ʼ549 Patent, col. 1:49-65). Conventional solutions like encryption were seen as problematic because if the software is freely distributed, the decryption key must also be widely available, defeating the purpose (ʼ549 Patent, col. 2:2-14).
• The Patented Solution: The invention proposes a system where the software ("protected shareware") contains "protective code" that controls its functionality based on digitally signed "authorization messages" from the supplier or its agent (ʼ549 Patent, Abstract). The software is embedded with the supplier's public key, allowing it to authenticate messages signed with the supplier's private key, thereby confirming the user is authorized to access protected features. The system also includes an "integrity self-checking routine" to ensure that the protective code itself has not been tampered with or bypassed (ʼ549 Patent, col. 2:39-55).
• Technical Importance: This approach provided a model for digital rights management that did not rely on preventing the copying of software, but rather on controlling its execution, a concept that became foundational to many software licensing and sales models.

Key Claims at a Glance

• The complaint does not identify any specific claims, alleging infringement of "one or more claims" (Compl. ¶12). 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 an authorization message is received.
  • The authorization message must be digitally signed by an authorized party using a secret key associated with a public key.
  • Providing the computer program's embedded protective code with access to the public checking key.
  • Running an integrity self-check on the computer program.
  • Communicating the authorization message to the user computer.
  • Using the public key to authenticate the 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 foreclose assertion of any claims (Compl. ¶15).

III. The Accused Instrumentality

Product Identification

• The accused instrumentality is identified as Defendant's website, located at the URL https://www.promega.com/products/ (Compl. ¶10).

Functionality and Market Context

• The complaint alleges that Defendant "makes, uses, sells, offers for sale, or imports one or more products that infringe" and identifies the "Accused Product" as its website (Compl. ¶9-10). The complaint further alleges that the infringement occurs through Defendant "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 any specific technical functionality of the website. Publicly available information indicates Promega Corporation is a global provider of reagents, assays, and instrumentation for the life sciences industry. The accused URL points to the "Products" section of its corporate and e-commerce website.

IV. Analysis of Infringement Allegations

The complaint does not contain claim charts or detailed infringement allegations mapping specific features of the accused website to the patent's claim limitations. It states that "Exhibit B" contains claim charts, but this exhibit was not filed with the complaint (Compl. ¶12, ¶14). The infringement theory is broadly stated as Defendant's use of its website for sales and offers for sale (Compl. ¶12).

No probative visual evidence provided in complaint.

Because the complaint provides no specific mapping of accused functionality to claim elements, a claim chart cannot be constructed. The analysis below identifies the potential points of contention that arise from the general allegations.

Identified Points of Contention

• Technical Questions: A central question is what specific process or software on the Promega website allegedly performs the claimed method. The complaint does not identify any software component that is first "inhibited" and later "enabled" upon receipt of a digitally signed "authorization message." The court may need to determine if standard e-commerce functions, such as requiring a user to log in to an account to view pricing or complete a purchase, could be argued to constitute the claimed method.
• Scope Questions: A primary dispute may arise over whether the patent’s claims, which are framed in the context of "protected shareware" running on a "user computer" ('549 Patent, claim 1), can be read to cover the operation of a centralized commercial website that sells physical goods. The defense may argue that the patent is directed at protecting distributed software applications, not at controlling access to information or functions on a remote server.

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for analysis of specific claim terms. However, based on the apparent mismatch between the patent's subject matter and the accused product, the following terms from independent claim 1 may become central to the dispute.

• The Term: "computer program"

• Context and Importance: The entire claim depends on the presence of a "computer program" whose features are being controlled. The case may turn on whether a commercial website for physical goods is considered a "computer program" in the sense contemplated by the patent. Practitioners may focus on this term to determine if the patent's scope can extend beyond the "shareware" context described in the specification.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term itself is broad. Plaintiff may argue it covers any set of executable instructions, including the server-side and client-side code that constitutes a modern website.
  • Evidence for a Narrower Interpretation: The specification repeatedly frames the invention in the context of "shareware," "executable computer programs," and software distributed to end-users for execution on a "host computer" ('549 Patent, col. 1:8-9; col. 2:19-24). The patent's title, "Protected Shareware", and background section may support a narrower construction limited to distributable software applications.

• The Term: "inhibiting... at least one functional feature... from running on a user computer"

• Context and Importance: This term defines the core access-control mechanism. Its construction will determine what kind of action constitutes infringement. A key question is whether restricting access to a webpage or requiring a login for an e-commerce transaction qualifies as "inhibiting" a "functional feature" of a "program" from "running."

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: Plaintiff may argue that any access restriction (e.g., a paywall or login screen) that prevents a user from proceeding with a task on the website is an "inhibition" of a "functional feature."
  • Evidence for a Narrower Interpretation: The patent's flow charts and description suggest a distinction between a program's "basic functionality" and its "extended functionality," with the latter being enabled by authorization ('549 Patent, FIG. 3). This may support an interpretation that requires disabling a specific capability within a program, rather than merely controlling access to the entire system or website.

VI. Other Allegations

• Indirect Infringement: The complaint does not allege indirect infringement. Count I is limited to direct infringement under 35 U.S.C. § 271(a) (Compl. ¶11-12).
• Willful Infringement: The complaint alleges that Defendant has had knowledge of its alleged infringement "since at least the date that Defendant was served with a copy of this Complaint" (Compl. ¶16). This allegation supports a claim for post-filing willful infringement only and does not allege pre-suit knowledge.

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

This case appears to present fundamental questions of both applicability and specificity, stemming from a complaint that is broad in its accusations but sparse in its factual detail. The key issues for the court will likely be:

1. A core issue will be one of technological scope: Can the claims of the ʼ549 Patent, which teach a method for controlling functionality within a "computer program" in the context of "protected shareware" on a "user computer," be construed to cover the operation of a centralized e-commerce website that primarily sells physical goods?

2. A key evidentiary question will be one of factual specificity: Can the Plaintiff, beyond the bare allegations in the complaint, identify a particular software component, a specific "inhibited functional feature," and a corresponding cryptographically "signed authorization message" within the Defendant's commercial website that plausibly maps to the technical requirements of the patent's claims?